Ex Parte SPIEGEL - Page 17




          Appeal No. 2004-0575                                                        
          Application 09/206,005                                                      


          to the teachings in Gilroy to make the modification therein urged           
          by the examiner.  In that regard, it is clear to us that the                
          method and apparatus in Gilroy is premised on having a one-piece            
          relief valve (Fig. 1) associated with the transmission cooling              
          system therein so as to reduce the number of required parts and             
          the number of fluid connections to the transmission cooling                 
          system and thus reduce the possibility of leaking.  In direct               
          contrast to such teachings, it is clear that the examiner’s                 
          proposed substitution of the cooling radiator seen in Figure 11             
          of FR ‘272 for the entirety of the transmission cooling/bypass              
          system seen in Figure 1 of Gilroy would not only increase the               
          number of parts and size of the system therein, but would                   
          significantly increase the number of fluid connections in the               
          transmission cooling system and thus significantly increase the             
          possibility of leaking.  Simply stated, absent hindsight derived            
          from appellant’s own disclosure and claims, there is no teaching            
          or suggestion in the collective disclosures of Gilroy and FR ‘272           
          which would have made it obvious to one of ordinary skill in the            
          art at the time of appellant’s invention to modify the                      
          transmission cooling system of Gilroy in the manner urged by the            
          examiner.  As our court of review indicated in In re Fritch, 972            
          F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992), it is               
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