Appeal No. 2001-0065
Application 09/048,289
oxygen reactor as sufficient to overcome the prima facie case of obviousness. To quote
the cited article, which includes as an author co-inventor Pikka himself:
“The screenroom location, among others, is a question of the process economy
and layout of the mill”. S. Martikainen, R. Lopponen, O. Pikka, and J. Vehmaa
“Mill Scale Experiences of a New Screenroom and Oxygen Stage Application”,
page 248, column 1, lines 32-35, 1998 International Pulp Bleaching Conference,
June 1-5, 1998 Helsinki, Finland.
Furthermore, and importantly, there is simply no quantitative evidence of these
economic savings in the form of a declaration containing factual data.
The Appellants have argued that there is no basis upon which one would go
against the teachings of Ahs which require the additional reactor, citing Uarco v. Moore
Business Forms, 440 F.2d 580, 585, 169 USPQ 263, 267 (7th Cir. 1971); In re Fleissner,
264 F.2d 897, 121 USPQ 270 (CCPA 1966); In re Edge, 359 F.2d 896, 149 USPQ 556
(CCPA 1966), and Ex Parte Thomson, 184 USPQ 558, 559 (Bd. App 1974). All of
those cases are easily distinguishable on their facts.
In Uarco, the references were not readily combinable, and both references had
portions which had to be discarded. In Fleissner, the CCPA noted that the manner of
operation of the invention was “altogether foreign to the teachings of the reference
patent”. Fleissner, 264 F.2d at 900, 121 USPQ at 271-2. In the present instance, the
Ahs and Mannbro references are clearly related, easily combined, and the omission of a
separate oxygen delignification unit on the branch line does not compare to a “manner
of operation altogether foreign” to the teachings of the art as a whole.
In Edge, the CCPA did note that it may be unobvious to remove an element while
retaining its function, but also that there was no suggestion to bond a thin layer of metal
directly to a card and obscuring a printed indicia thereon. In the present instance, there
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