Appeal No. 2006-1076
Application No. 10/147,252
We do not find Appellants’ arguments persuasive in overcoming the examiner’s prima
facie showing of obviousness.
A reference is relevant to the obviousness inquiry if it is reasonably pertinent to the
problem with which the inventor was involved. In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d
1058, 1060-61 (Fed. Cir. 1992) (a reference in a different field from that of the inventor’s
endeavor is still reasonably pertinent if the matter with which it deals “logically would have
commended itself to an inventor’s attention in considering his problem”). Thus, we are in
agreement with the Examiner that Appellants’ noted differences in the Gordon and Pall
structures do not establish a lack of motivation to combine given the examiner’s finding that
Gordon is reasonably pertinent to Pall’s problem of securing a filter member to an end cap. See
Final Rejection, p. 5; Examiner’s Answer, p. 6 (“[T]he support member 30 of Gordon could be
considered an ‘end cap’ and . . . the end cap 18 of Pall could be considered a ‘support member’
such that skilled man would be motivated to consider the teachings of Gordon in combination
with Pall.”)
Appellants’ arguments are also unconvincing in that they are directed to the infeasibility
of using Gordon’s method per se in making Pall’s filter module. See, e.g.,Reply Brief, p. 2
(“Gordon . . . teaches use of a laser in a method that is inapplicable to Pall”) and Reply Brief,
pp. 2-3 (“[u]sing Gordon’s laser method to liquefy a top edge of Pall’s end cap . . . would fail to
provide the leakproof seal”). These arguments do not address the position taken by the examiner.
In our view, the Examiner has clearly explained that he relies on Gordon for the limited teaching
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