Appeal No. 2001-1548 Page 5
Application No. 08/907,512
the prior art suggested the desirability of the modification. See In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992) In re Mills, 916 F.2d 680, 682,
16 USPQ2d 1430, 1432 (Fed. Cir. 1990); In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). From our perspective, the only suggestion for locating piston
position sensors in the walls of the cylinders as called for in claim 4 is found in the luxury of
hindsight accorded one who first viewed the appellant’s disclosure. This, of course, is not
a proper basis for a rejection. See Fritch, 972 F.2d at 1266, 23 USPQ2d at 1784. For
this reason alone, the examiner’s rejection of claim 4 must fail.
Additionally, we find no suggestion in the references applied by the examiner to
place first and second heating jackets around at least a portion of the first and second
cylinders, as also called for in claim 4. We note, at the outset, that Zanarini discloses a
cooling jacket, not a heating jacket placed about a cylinder of a compressor (see column
3, lines 41-48). While it is true that both heating jackets and cooling jackets include heat
exchanger structure, we are confident that one skilled in the art would not consider a
“cooling jacket” as taught by Zanarini to be a “heating jacket” as that terminology is used in
claim 4. Thus, the placement of cooling jackets around portions of the cylinders of
Perrine’s apparatus would not, in our opinion, yield the subject matter of claim 4. In any
event, the examiner has pointed to nothing in the disclosure of Zanarini or Perrine which
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