Ex parte WOLD - Page 4




          Appeal No. 1998-2349                                                        
          Application 08/586,874                                                      


          of the anion exchange resin.  This approach has the advantage               
          of preventing loss of anion exchange capacity, but has the                  
          disadvantage of requiring the use of low-activated carbon to                
          remove the chlorine.  The second approach is to place the                   
          anion exchange resin upstream of the chlorine removal.  This                
          approach has the advantage of permitting use of high-activated              
          carbon for chlorine removal and avoiding, due to the iron                   
          being removed upstream of the high-activated carbon, any                    
          reduction of the iron by the high-activated carbon, but has                 
          the disadvantage of some loss of anion exchange resin                       
          capacity.  The fair suggestion, to one of ordinary skill in                 
          the art, of this second approach would have rendered the                    
          method recited in appellant’s claim 8 prima facie obvious to                
          such a person.                                                              
               Appellant argues that one of ordinary skill in the art                 
          would not have been motivated to remove the iron in Takatomi’s              
          method before the chlorine because such a person would have                 
          expected that doing so would have the disadvantage of partial               
          loss of anion exchange resin capacity and would not have any                
          advantage (reply brief, page 2).  The advantage, as discussed               


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