Appeal No. 2001-1650
Application No. 08/898,085
evidence in Greenquist of any shortcoming of the simple diffusion techniques
disclosed therein which would have suggested applying Ijsselmuiden’s suction
means to Greenquist’s device. Similarly, we find nothing in the disclosures of the
single-filter techniques of Ijsselmuiden and Clark which would have suggested
the desirability of adding a suction means to the multi-layered device of
Greenquist. As stated in Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-
1784 (footnote omitted), “[t]he mere fact that the prior art may be modified in the
manner suggested by the Examiner does not make the modification obvious
unless the prior art suggested the desirability of the modification.” In this case
we simply do not find substantial evidence of a motivation, suggestion or
teaching for combining the cited references so as to arrive at claimed invention.
The examiner argues that the claims are drawn to a device, not a method,
and that appellants’ arguments regarding the requirement of a gas sample, as
opposed to the liquid sample of the prior art, do not establish that the device as
claimed would have been non-obvious because the cited references provide
motivation for the claimed assembly of elements (Examiner’s Answer, pages 10-
12). The examiner also argues that a recitation of an intended use must result in
structural difference between the claimed invention and the prior art in order to
distinguish the claims from the prior art (Examiner’s Answer, page 11).
However, we construe the limitation in claim 19, “said means does not
draw said gas through said capture matrix” to require the device to be configured
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