Appeal No. 2003-0318
Application 09/377,262
Reply brief, page 2. Although the examiner comments on the
Frazier permeability and other features of the Jones and Singer
references, the record is devoid of the examiner’s reasoning as
to how these factors correlate to removal efficiency and initial
quality factor.
Moreover, we are in agreement with appellant that the record
does not properly establish why one of skilled in the art would
have been motivated to combine the teachings of Jones and Singer.
The examiner seems to suggest that because Jones and Singer are
drawn to the same field of endeavor, one having ordinary skill in
the filter art would combine the teachings to arrive at a filter
with high filtering efficiency. See examiner’s answer, page 5.
However, the fact that Jones and Singer may be in the same field
of endeavor is not sufficient to establish that one of ordinary
skill in the art would have been motivated to combine their
teachings. In this regard, we note that the examiner has even
failed to provide reasoning as to why one of ordinary skill in
the art would have been motivated to look to Singer given the
fact that Singer does not relate to breathing mask fabrics that
are suitable for use in an oily-misk environment.
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