Appeal No. 2003-0671 Page 7
Application No. 09/099,632
thus in our view would have operated as a disincentive to one of ordinary skill in the art
to so do.
The mere fact that the prior art structure could be modified does not make such a
modification obvious unless the prior art suggests the desirability of doing so. In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In the present
case, we fail to perceive any teaching, suggestion or incentive which would have led
one of ordinary skill in the art to modify the Phillips heat exchanger in the manner
proposed by the examiner except for the hindsight afforded one who first viewed the
appellants’ disclosure. Hindsight, of course, cannot form the basis for a rejection. In re
Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
It therefore is our conclusion that Phillips fails to establish a prima facie case of
obviousness with regard to the subject matter of claim 1, and we will not sustain this
rejection, or the like rejection of claims 31, 32 and 34, which depend from claim 1.
Independent claim 21 contains the same limitations in describing a method of
transferring heat between a heat transfer fluid and another media. On the basis of the
reasoning explained above with regard to claim 1, we also will not sustain the rejection
of claim 21 on the basis of Phillips.
Rejection (2)
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