Appeal No. 1998-2349
Application 08/586,874
partial loss of exchange capacity of the anion exchange resin.
Furthermore, there is no evidence or technical reasoning
advanced by the examiner tending to show that using high-
activated carbon after iron removal would have been reasonably
expected to offer enough of a benefit to sufficiently mitigate
the disadvantage created by the loss of anion exchange resin
capacity. In my view, there is no factual basis to support
the finding that the second approach, as the majority calls
it, was known in the art at the time of invention or that
there was a reason, suggestion or motivation, understood by
those of ordinary skill in the art, for reversing the order of
the steps.
“In proceedings before the Patent and Trademark Office,
the examiner bears the burden of establishing a prima facie
case of obviousness based upon the prior art.” In re
Fritsch, 972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir.
1992). The mere fact that the prior art could be modified as
proposed by the examiner is not sufficient to establish a
prima facie case. See Fritsch, 972 F.2d at 1266, 23 USPQ2d at
1783-84. “[A] determination of obviousness must be based on
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