Appeal No. 2001-1680
Application 08/890,471
elements, “the question is whether there is something in the
prior art as a whole to suggest the desirability, and thus
obviousness, of making the combination.” Lindemann
Maschinenfabrik GmbH v. American Hoist & Derrick Co., 730 F.2d
1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984) (citations
omitted). As pointed out by appellant, both Schrader and Hart
disclose “a total, complete apparatus which is purportedly
effective and neither admits to any deficiency which would
lead one to refer to another to supply such deficiency.”
Appeal Brief, page 9. The examiner’s contention that it would
have been obvious to have used the fan of Hart and the
apparatus of Schrader to further promote the desired flow
direction of the gases, while plausible, is simply unsupported
by the teachings of the prior art. See In re Kotzab, 217 F.3d
1365, 1371, 55 USPQ2d 1313, 1317 (Fed. Cir. 2000) (emphasis
added) (“[P]articular findings must be made as to the reasons
the skilled artisan with no knowledge of the claimed
invention, would have selected these components for
combination in the manner claimed”). While it is true that
the suggestion or motivation to modify a reference may be
implicit from the prior art as a whole rather than expressly
stated, the examiner must be still provide reasons for finding
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