Appeal No. 1999-0551 Page 6
Application No. 08/636,431
construed to be that the second membrane prevents particulate matter from penetrating the entire inner
surface. To construe otherwise would defeat the purpose of the invention as described in the
specification. (See pages 1 to 3 and Figures 3 and 4.) Neither Zievers nor Connolly discloses a
membrane that protects the entire inner surface of the filter (porous sidewall) from penetration by
particulate matter. Even if one of ordinary skill in the art were to modify the filter of Connolly as
suggested by the Examiner, the filter achieved would not meet the limitations of claims 1 and 5 because
the inner surface of the porous sidewall would not be protected from penetration from particulate
matter.
In the absence of sufficient factual evidence or scientific rationale on the part of the Examiner to
establish why and how a skilled artisan would have arrived at Appellant’s filter element the applied
references’ teachings as discussed above, we find that the Examiner has failed to meet the initial burden
of establishing the prima facie obviousness of the claimed subject matter. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-1472,
223 USPQ 785, 787-788 (Fed. Cir. 1984). Accordingly, we reverse the Examiner*s rejection of
claims 1 to 9 under 35 U.S.C. §103(a).
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