Appeal No. 1997-3056
Application No. 08/377,966
Indeed, while it may be possible to combine these structures in
certain ways, the resulting apparatus would not only fail to
correspond to the here claimed apparatus but might even be
incapable of performing the functions desired for the apparatus
defined by the patent claims or for that matter the functions
desired for the apparatus defined by the appealed claims.
In light of the foregoing, the Examiner erroneously concluded
that it would have been obvious “to modify [the claimed apparatus
of] USP 5,173,264 to use a well known commercial available
filtration unit, such as the MiniKap 500 module”, in such a manner
as to result in the here claimed apparatus. Clearly, the only
way in which such a modification would have yielded the apparatus
defined by the appealed independent claim is via the application
of impermissible hindsight wherein that which only the inventor
has taught is used against its teacher. See W.L. Gore & Assocs. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-313, (Fed.
Cir. 1983), cert denied, 469 U.S. 851 (1984).
For this reason alone, we cannot sustain the Examiner’s
obviousness-type double patenting rejection of claims 1-4 as being
unpatentable over claims 1-16 of U.S. Patent No. 5,173, 264 in view
of the MiniKap brochure. Further, because the fatal error made by
the Examiner in this rejection also applies to the other rejections
66
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007