Appeal No. 97-1080
Application 08/201,733
after the liquid (20) pumping reservoir (15)
for the purpose of restricting fluid flow in
an upstream or downstream direction in a heat
actuated pumping system. It would have been
obvious at the time the invention was made to
a person having ordinary skill in the art to
employ in Dowdy et al. first and second ball
check valves located just before and just
after the liquid pumping reservoir for the
purpose of restricting fluid flow in an
upstream or downstream direction as disclosed
in Mandroian. [Answer, pages 4 and 5.]
We do not agree with the examiner’s position. The mere fact
that the incorporation of Mandroian’s first and second ball check
valves into the device of Dowdy would result in Dowdy’s fluid
being restricted to either an upstream or downstream direction
does not serve as a proper motivation for combining the teachings
of Dowdy and Mandroian as the examiner apparently believes.
Instead, it is well settled that it is the teachings of the prior
art taken as a whole which must provide the motivation or
suggestion to combine the references. See, e.g., Uniroyal, Inc.
v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438
(Fed. Cir. 1988) and Interconnect Planning Corp. v. Feil,
774 F.2d 1132, 1143, 227 USPQ 543, 550-51 (Fed. Cir. 1985).
Essentially what the examiner has done is treated the
reservoir/heater arrangement 50, 54 of Dowdy as though it were a
pump for moving fluid around conduit loop 18, 24 and thereafter
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