Appeal No. 1997-4399
Application 08/505,338
apparatus or to the manner in which the apparatus is intended to be employed. Cf. Ex parte
Masham, 2 USPQ2d 1647, 1648 (Bd. Pat. App. & Int. 1987), and cases cited therein. Thus, we
interpret claim 9 to specify an apparatus comprising at least “a container . . . containing packing
arranged in a number of successive stages” and means for supplying, treating and moving a fluid in,
through and between the stages.
In comparing the claimed apparatus encompassed by claim 9 with the teachings of the applied
combination of references, we must agree with appellants (brief, e.g., pages 19-20) that the differences
between the structure of the apparatus disclosed in Kignell and the structure of the claimed apparatus
are not merely (1) the means for supplying a reagent to a solution in each stage and (2) the absence of
packing in “one of the scrubbing stages” as contended by the examiner (answer, pages 6-8; emphasis
supplied; see also pages 13-14). Indeed, claim 9 specifies that the packing creates “successive stages”
and the means for intra- and inter-stage movement of a solution. At best, Murray would have suggested
means to add a reagent to one stage as shown in that reference and Perry et al. disclose “impingement
separators” which, in the absence of an explanation, do not appear to involve fluid flow with respect to
“stages” in the manner specified for the claimed apparatus.
Thus, in considering the claimed apparatus encompassed by appealed claim 9 as a whole,
including each and every claim limitation, we fail to find in the combination of references applied by the
examiner any teaching, suggestion or motivation in the applied prior art taken as a whole which would
have led one of ordinary skill in this art to the claimed apparatus. Indeed, the modifications suggested
by Murray and/or Perry et al. would not have resulted in any limitation of the claimed apparatus.
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed.
Cir. 1988). Therefore, it is manifest from the record that the examiner had to rely on hindsight gained
from appellants’ invention in order to reach his conclusion that the invention encompassed by the
appealed claims would have been obvious from the applied prior art. See generally, Fine, supra.
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