Appeal No. 2004-2193 Page 7
Application No. 09/737,781
In the final analysis, it is our view that the only suggestion for modifying the
Busboom apparatus in the manner proposed by the examiner is found in the luxury of
the hindsight afforded one who first viewed the appellants’ disclosure. This, of course,
is not a proper basis for a rejection. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1784 (Fed. Cir. 1992). We therefore conclude that the combined teachings of
Busboom and Kobayashi fail to establish a prima facie case of obviousness with regard
to the subject matter recited in independent claim 5, and we will not sustain the rejection
of claim 5 or of independent claim 8, which contains the same limitations and against
which the same rejection has been applied. It follows that we also will not sustain the
like rejection of dependent claims 6 and 9.
Independent claim 1 and dependent claims 2, 3 and 7 stand rejected as being
unpatentable over Busboom and Kobayashi, taken further with Uhl, which was applied
for teaching that it was known in the art at the time of the appellants’ invention to
provide an air flow velocity through an air filter intake that is less than the air flow
velocity through the engine air intake. Be that as it may, Uhl fails to overcome the
problem cited above regarding the lack of suggestion to combine Busboom and
Kobayashi in the manner proposed by the examiner. This being the case, this rejection
also is not sustained.
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