MENNEN
[Wennerstrurn] preferably operates at a constant pressure during microwave
irradiation by operating the vacuum pump 40 continuously and opening and
closing the small valve 98 as necessary throughout the drying operation[.
Wennerstrurn] must continuously apply additional vacuum to maintain
constant pressure as temperature rises due to microwave energy (based on
ideal gas equation); thus, applying reduced pressure to compensate for
increases in pressure due to temperature increases ....
Paper 40, p. 14 (emphasis added).
We fail to see how the teaching of maintaining a constant reduced pressure in
Wennerstrum's chamber necessarily describes the intermittent application of reduced pressure as
required by Mengal's involved claims. Wennerstrum's goal is to keep the pressure constant. Par6
has not directed us to any evidence relating to how a person having ordinary skill in the microwave
extraction art would understand the Wennerstrum. patent. Par6 has not provided any evidence which
supports finding that a person having ordinary skill in the art would understand Wennerstrum to
teach the intermittent application of reduced pressure. Again all we are offered is attorney argument.
The intermittent application of reduced pressure has not been proved to be inherently disclosed in
Wennerstrum.
I b. Obviousness of Intermittent Application of Reduced Pressure
Par6 asserts that Mengal's involved claims are obvious over the combination of each of the
Pari patents with Ganzler and Wennerstrum. Assuming that Ganzler and Wennerstrurn inherently
teach intermittently applying reduced pressure, Par6 has not explained why the person of ordinary
skill in the art would have recognized and appreciated this step. The fact that a feature may be
inherent does not mean it would have been obvious. Inherency and obviousness are distinct
concepts. Kloster Speedsteel A.B v. Crucible Inc., 793 F.2d 1565,1576,230 USPQ 81, 88 (Fed. Cir.
1986); W. L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1555, 220 USPQ 303, 314
(Fed. Cir. 1983) (citing In re Spormann 363 F.2d 444, 448, 150 USPQ 449, 452 (1966)), cert.
105 S. Ct. 172 (1984). Thatwhichmaybe inherent is not necessarily known. Spormann 363
F.2d at 448, 150 USPQ at 452. Obviousness cannot be predicated on what is unknown. Spormann
id. Par6 has not directed us to any evidence establishing that a person having ordinary skill in the
art would have known that Ganzler and Wennerstrum intermittently apply reduced pressure during
the exposure to microwaves.
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