Appeal No. 2006-0010 Page 10
Application No. 10/170,538
not mention the desirability or possibility of providing more than one gas feeding unit in
the various embodiments illustrated in the Figures thereof. Appellants further argue that
there are a number of ways to increase the quantity of gas bubbles in the embodiments
shown in Sang which are not limited to increasing the number of gas feeding units.
(Brief, pp. 62-67). Thus, Appellants conclude that the Examiner has failed to establish a
prima facie case of obviousness of the subject matter.
We agree with Appellants. The mere fact that the prior art could be modified as
proposed by the Examiner is not sufficient to establish a prima facie case of
obviousness. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir.
1992). The Examiner must explain why the prior art would have suggested to one of
ordinary skill in the art the desirability of the modification. See Fritch, 972 F.2d at 1266,
23 USPQ2d at 1783-84. The Examiner has not adequately explained how the general
teaching of uniform pore size suggests the modifications required to achieve the
invention of the independent claims. Moreover, the Examiner has not explained where
in the prior art it is recognized the results that would have been achieved by altering the
shape or configuration of the pipe of Sang. The Examiner has not provided any
evidentiary support on this record for this position. See In re Lee, 277 F.3d 1338, 1343,
61 USPQ2d 1430, 1434 (Fed. Cir. 2002)("This factual question of motivation is material
to patentability, and could not be resolved on subjective belief and unknown authority.").
Furthermore, the Examiner has not explained how a person of ordinary skill in the art
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