Appeal No. 2001-0370
Application No. 08/978,991
claimed composition or device or carry out the claimed process,
and (2) whether the claimed prior art would have revealed a
reasonable expectation of success in doing so. See In Re Dow
Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531 (Fed. Cir.
1988). Both the suggestion and the reasonable expectation of
success must be found in the prior art, not in the applicant's
disclosure. Id.
The examiner’s findings are insufficient to show that one of
ordinary skill in the art would have been motivated to modify
Duty to achieve the claimed invention absent knowledge of the
appellants’ invention. Based on our review of the reference,
Duty is able to achieve more scrubbing of heavily laden stack gas
through the use of an additional baffle containing adsorbent as
shown in figure 11. Thus, we cannot agree that one of ordinary
skill in the art would have been motivated to eliminate the
adsorbent. Moreover, as noted above, the examiner has failed to
identify a teaching or suggestion in Duty of locating the
deflectors such that the liquid is deflected away from the wall
as required in both claims 1 and 11.
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