Appeal No. 1997-4422
Application 08/269,797
appellants’ claim 38 requires (1)a water-gas-shift and
methanation stage, followed by (2) an ammonia decomposition
stage, claim 38 requires such in the claimed sequence. The
sequence of stages in either claim 24 or claim 38 facilitates
ammonia decomposition as described on page 5, line 32 through
page 6, line 28 of appellants’ specification.
Some of the references applied by the examiner may show
that each stage is individually known in the art. For
example, Graboski recognizes that both water-gas-shift and
methanation can occur in reactor 30 simultaneously (column 5,
lines 47-59). Yet, Deinart does not teach or suggest to one
skilled in the art to incorporate the disclosed NH3
decomposition stage into the water-gas-shift and methanation
stage of Graboski, in the order set forth in claim 24 or in
claim 38. We cannot find such suggestions in any of the
applied references; nor has the examiner explained that such
teachings exist in any of the applied references.
These above described circumstances lead us to conclude
that the examiner, in making his Section 103 rejections, has
fallen victim to the insidious effect of hindsight syndrome
wherein that which only the inventor has taught is used
against its teacher. W.L. Gore & Assocs. V. Garlock, Inc.,
721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984). We point out that “[o]bviousness cannot be
established by combining the teachings of the prior art to
produce the claimed invention, absent some teaching,
suggestion or incentive supporting the combination.” In re
Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 1278 (Fed. Cir.
1987). Here, absent hindsight, the skilled artisan would not
have found it obvious to conduct appellants’ claimed process
involving a water gas shift stage, a CO methanation stage, and
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007