Ex parte LAVIN - Page 5
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Board of Patent Appeals and Interferences > 1998 > Ex parte LAVIN - Page 5
Appeal No. 97-4429 Page 5
Application No. 08/404,666
The teachings of Smith and Collin are set forth on pages 4-5
of the answer.
It is axiomatic that obviousness cannot be established by
combining the teachings of the prior art to produce the claimed
invention, absent some teaching, suggestion or incentive
supporting such combination. See In re Bond, 910 F.2d 831, 834,
15 USPQ2d 1566, 1568 (Fed. Cir. 1990).
We agree with the appellant that the applied prior art fails
to provide the needed suggestion or motivation to one of ordinary
skill in the art at the time of the appellant's invention to
modify the applied prior art as proposed by the examiner. That
is, we agree that the combined teachings of the applied prior art
would not have resulted in the substitution of Collin's device
for the condensers 20, 22 of Smith. In fact, the examiner relies
on condenser 20 of Smith to be the subcooler recited in claim 1
and to perform the subcooling step recited in claim 17.
Furthermore, we see no suggestion or motivation, absent
impermissible hindsight, to substitute Collin's device for the
condenser 22 of Smith. Accordingly, we will not sustain the
35 U.S.C. § 103 rejection of claims 12, 13, 15, 17, 19 and 20.
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Last modified: November 3, 2007