Appeal No. 2005-1662
Application No. 09/996,505
As reflected by the quotations above, the examiner’s
obviousness analysis proposes a variety of ways for combining the
applied prior art in such a manner as to read on the here claimed
invention. It is well settled, however, that a proper
obviousness analysis also requires particular identification of
some suggestion, teaching or motivation to combine the prior art
as well as specific findings such as the nature of the problem to
be solved which support an obviousness conclusion. See In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617-18 (Fed. Cir.
1999). It is these latter aspects of a proper obviousness
analysis which are lacking from the aforequoted obviousness
position advanced by the examiner in this appeal.
For example, the examiner urges that “one of ordinary skill
in the art would be motivated to use SZC in or as one of the
layers in REDY because of its ability to absorb phosphate ions”
(answer, page 13). By itself, this ability would not have
motivated an artisan to provide SZC in one of the layers of the
REDY™ cartridge for the simple reason that the HZO-Ac layer of
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