Appeal No. 1999-0404 Page 25
Application No. 08/580,256
invention to have included such heat exchange tubes in the
known prior art system. Thus, we conclude that the examiner's
determination regarding the obviousness of the claimed subject
matter did not involve the use of hindsight knowledge derived
from the appellants' own disclosure.4
Second, while the applied prior art does not recognize
the particular problem the appellants set out to solve, this
fact does not persuade us that any error in the examiner's
determination regarding the obviousness of the claimed subject
matter has occurred. As long as some motivation or suggestion
to combine the references is provided by the prior art taken
as a whole, the law does not require that the references be
combined for the reasons contemplated by the inventor. See In
re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir.
1990)(en banc), cert. denied, 500 U.S. 904 (1991) and In re
4The use of such hindsight knowledge to support an
obviousness rejection under 35 U.S.C. § 103 is, of course,
impermissible. See, for example, W. L. Gore and Associates,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-
13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
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