Appeal No. 1997-2910
Application 08/421,387
Appellant argues that these references do not suggest the
combination of the claimed invention. In particular,
Appellant argues that the motivation suggested in the Office
action that an artisan would find such combination obvious
repeats the same pedestrian reason that cooling would be
better.
The Federal Circuit states that "[t]he mere fact
that the prior art may be modified in the manner suggested by
the Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984).
On page 5 of the Examiner's answer, the Examiner
argues that it would have been obvious to one of ordinary
skill in the art to either use the radiator fins of Depew or
either the radiator of Zelinka or Van Warmerdam or,
conversely, to use the inner and outer rings of Zelinka or Van
Warmerdam for the radiator of Depew. The Examiner argues that
in the first case,
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