Appeal No. 2001-1350
Application No. 09/188,766
With regard to the rejection of claims 1 through 3 and 5
through 9 under 35 U.S.C. § 103(a) as being unpatentable over the
APA and Isaji (final rejection, pages 2-3), we agree with
appellants' arguments in their brief and reply brief that the
examiner has disregarded the teachings of the Isaji patent as a
whole and instead improperly attempted to extract a generalized
concept from Isaji and then apply that general concept to the
clearly different refrigeration system of the APA, without any
teaching, suggestion, or incentive in the prior art itself for
any such combination. More particularly, we agree with
appellants' arguments, analysis of the applied prior art and
commentary on the examiner's attempted combination of the APA and
Isaji as set forth on pages 8-12 of the brief and pages 2-12 of
the reply brief, and we adopt those positions as our own.
Like appellants, it is our opinion that the examiner has
improperly used the hindsight benefit of appellants' own
disclosure to fabricate a broad concept from the applied Isaji
patent and then selectively combine that broad concept with the
distinctly different refrigeration system of the APA in an
attempt to reconstruct appellants' claimed subject matter.
However, as our court of review indicated in In re Fritch,
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