Appeal No. 97-4249
Application No. 08/249,400
O'Neal apparatus, in such a fashion. The mere fact that the
prior art structure
could be modified does not make such a modification obvious
unless the prior art suggests the desirability of doing so.
See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). We find such suggestion to be lacking here.
The problem of lack of suggestion exists also in the
examiner's first combination of references, that is, the
modification of the O'Neal apparatus on the basis of the
teachings of Oogushi. The examiner has admitted that the
O'Neal heat exchangers are not of serpentine configuration
with a
plurality of spaced, generally parallel legs (Answer, page 4).
It is the examiner's position, however, that such an
arrangement is shown by Oogushi, and that it would have been
obvious to employ this in O'Neal "for the purpose of efficient
heat transfer" (Answer, sentence bridging pages 4 and 5).
This implies that Oogushi teaches that the serpentine
arrangement is more efficient than those of O'Neal, the
configurations of which were not disclosed. The examiner has
not pointed out, nor can we discern, any such teaching in
Oogushi. The fact is that in Oogushi both the prior art
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