Appeal No. 2002-0064
Application No. 09/084,042
In the present instance, where the examiner has cited no
evidence to support his subjective opinion that one of ordinary
skill in the art would consider the further limitations found in
claims 2-5 to be obvious design expedients, and where the claim
limitations in question go to the very essence of appellant’s
invention (see, for example, the summary of the invention on
pages 8-9 of the specification), they may not be dismissed as
mere design expedients that solve no stated problem or produce no
new or unexpected result. Compare In re Kuhle, 526 F.2d 553,
555, 188 USPQ 7, 9 (CCPA 1975) (use of electrical connection
which solves no stated problem in lieu of those used in the
reference held to be obvious matter of design choice within the
skill in the art). On this basis, the examiner’s rejection of
claims 2-5 as being unpatentable over Pauletta cannot be
sustained.
Moreover, for the reasons discussed in our treatment of the
anticipation rejection of claim 1, the heat exchanger of Pauletta
does not meet the “regenerator” limitation found in claims 2-5 by
10
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