Appeal No. 1998-2349
Application 08/586,874
the field.” In re Kotzab, 217 F.3d 1365, 1369-70, 55 USPQ2d
1313, 1316-17 (Fed. Cir. 2000). “The invention must be viewed
not with the blueprint drawn by the inventor, but in the state
of the art that existed at the time.” In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)(quoting
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227
USPQ 543, 547 (Fed. Cir. 1985). To establish a prima facie
case of obviousness, “there must be some teaching, suggestion
or motivation in the prior art to make the specific
combination that was made by the applicant.” In re Dance, 160
F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998).
The majority opinion, after careful consideration of the
facts as apparent from their opinion, arrives at the
conclusion that the claims define only obvious subject matter
based on the finding that:
Takatomi would have fairly suggested two
approaches to one of ordinary skill in the art. One
is Takatomi’s approach, which is to carry out the
chloride removal upstream 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 chloride. The second approach is to place the
anion exchange resin upstream of the chlorine removal.
This approach has the advantage of permitting use of
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