Appeal No. 1999-0859
Application No. 08/330,972
rationale as to why the skilled artisan would combine these
prior art references. Rather than pointing to specific
information in Gorrie and Oto that would suggest their
combination, the Examiner instead has described piecemeal
similarities between each of the references and the claimed
invention. Nowhere does the Examiner identify any suggestion,
teaching, or motivation to combine the Gorrie and Oto references
nor does the Examiner establish any findings as to the level of
ordinary skill in the art, the nature of the problem to be
solved, or any other factual findings that would support a
proper obviousness analysis. See, e.g., Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F. 3d 1568, 37 USPQ2d 1626 (Fed.
Cir. 1996).
Further, it is our view that the Examiner’s proposed
addition of Magin to the combination of Gorrie and Oto does not
cure the deficiencies of either reference, singly or in
combination. Even assuming arguendo that the recited
limitations of the independent claims are found in the various
references, we find no motivation for modifying any combination
of Gorrie and Oto in the manner suggested by the Examiner.
There is nothing in the disclosures of either Gorrie or Oto to
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