Appeal No. 1999-0551 Page 11
Application No. 08/636,431
Zievers thus describes a membrane “in communication with said inner surface” as required by claim 5. 3
I, therefore, conclude that the Examiner has established a prima facie case of unpatentability over
Connolly and Zievers.
In addition to the argument that the claims require the entire inner surface to be covered by the
second membrane, Appellant also argues that the references do not solve the problem solved by the
present invention and that there is no motivation for one of ordinary skill in the art to combine their
teachings to attempt to solve the problem solved by the present invention (Brief, page 9). These
arguments are not persuasive. A prima facie case of obviousness does not require that the applied
prior art recognize and address the specific problem upon which the inventor was working. See In re
Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901-1902 (Fed. Cir. 1990)(en banc), cert denied,
500 U.S. 904 (1991). Moreover, the motivation in the prior art to combine the teachings of the
references need not be the same as that of the applicant to establish obviousness. In re Kemps, 97
F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996).
Appellant also argues that “[t]here is no teaching in Zievers et al. that would indicate to one
skilled in the art that it would be desirable to use a membrane such as that shown in Connolly et al. on
both the inner and outer surface of the sidewall.” (Reply Brief, page 2). The Examiner stated that it
would have been obvious to make the combination “in order to protect such filter member” (Answer,
3Zievers describes each and every element of claim 5 and thus anticipates this claim. I note that
lack of novelty is the ultimate or epitome of obviousness. In re Fracalossi, 681 F.2d 792, 794, 215
USPQ 569, 571 (CCPA 1982).
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