Appeal No. 96-3011
Application No. 08/165,313
Burne. In this regard, we are of the view that the examiner’s
position is based on impermissible hindsight gleaned from
appellants’ own disclosure and not from any fair teaching or
suggestion found in the applied prior art references
themselves. More specifically, we consider that the examiner
has used appellants’ own disclosure and the claimed invention
itself as a blueprint for piecing together unrelated elements
from disparate references in the prior art so as to defeat
patentability of the invention as defined in appellants’
claims on appeal.
Absent the disclosure of the present application, it is
our opinion that one of ordinary skill in the art would not
have been motivated by the collective teachings of the applied
Burne and Roberts patents to use the sophisticated and
specialized dimpled evaporating surface of Roberts in the
relatively simple oil cooler of Burne, where there is no
evaporation of the medium flowing through the cooler and
wherein the importance of a low (minimum) pressure drop has
been emphasized. Thus, the examiner's rejection of claims 1
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