Appeal No. 2001-1548 Page 6
Application No. 08/907,512
would have suggested placement of a heating or cooling jacket on the cylinders 10, 11 of
the Perrine apparatus.
In explaining the motivation for making the proposed modification, the examiner
asserts that
[i]t was old and well known in the art that the use of a
conventional fluid filled jacket was an advantageously efficient
way to transfer heat to and from a cylinder. Therefore, it would
have been obvious to one of ordinary skill in the art of pump
fabrication at the time the invention was made to have used
the standard liquid filled jacket taught by Zanarini, on the
cylinders disclosed by Perrine et al., to have advantageously
increased the efficiency of the unit [answer, page 5].
Even accepting the examiner’s statement that it was old and well known in the art that the
use of a conventional fluid filled jacket was an advantageously efficient way to transfer heat
to and from a cylinder, it is not apparent to us how this led the examiner to the conclusion
that it would have been obvious to use a fluid filled jacket on Perrine’s cylinders to increase
2
the efficiency of the unit. As our reviewing court made clear in In re Lee, ___ F.3d ____,
____ 61 USPQ2d 1430, 1435 (Fed. Cir. 2002),
when [the USPTO relies] on what [it asserts] to be general
knowledge to negate patentability, that knowledge must be
articulated and placed on the record. The failure to do so is
not consistent with either effective administrative procedure or
effective judicial review. The [USPTO] cannot rely on
conclusory statements when dealing with particular
2Perrine’s cylinders are used for compressing and pumping a gas. The use of heat transfer to or
from the cylinders to effect or assist this process is not taught or suggested by Perrine.
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