Appeal No. 2001-0370
Application No. 08/978,991
According to the examiner, claims 1-8, 10-13 and 18 are
unpatentable since “it would have been obvious for an artisan at
the time of the invention, to eliminate the adsorbent and its
requisite function from the scrubbing apparatus as taught by Duty
et al, since such would allow for the scrubbing of highly laden
gas streams without undue pressure drop across the apparatus.”
Examiner’s Answer, pages 4-5.
In order to prevent the impermissible use of hindsight, the
examiner is required to show some motivation to modify the
reference that creates the case of obviousness. In re Rouffet,
149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457 (Fed. Cir. 1998).
Thus, the examiner must show reasons why one of ordinary skill in
the art, with no knowledge of the invention, would modify the
prior art in the manner claimed. Id. The suggestion or
motivation to modify a reference may be implicit from the prior
art as a whole rather than expressly stated. In re Kotzab, 217
F.3d, 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). A
proper analysis under § 103 requires, inter alia, a consideration
of two factors: (1) whether the prior art would have suggested
to those of ordinary skill in the art that they should make the
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