Appeal No. 2004-1125
Application No. 09/923,998
For these reasons, we uphold the examiner’s rejection on
this ground.
II. Claim 19: 35 U.S.C. § 103(a) over Erwin
Regarding claim 19, the examiner admits that the recited
coating steps are not disclosed in Erwin. (Final Office action,
page 6.) Nevertheless, the examiner held (id.):
It would have been obvious to a person of
ordinary skill in the art at the time the invention
was made to perform the coating process that includes
flowing the solution through the passages, draining
the solution, and drying the passages, since applicant
has not disclosed that performing such process solves
any stated problem or is for any particular purpose
and it appears that the passages in the heat exchanger
would perform equally well with a coating process that
includes heat bonding as described by Erwin.
Furthermore, the coating process involving the
flowing, draining, and drying is a well known process
in the art dealing with applying a thin layer of
coating inside a tube.
We cannot agree with the examiner on this issue. The
examiner does not point to any specific motivation, suggestion,
or teaching in the prior art that would have led one of ordinary
skill in the art to modify Erwin. In re Dembiczak, 175 F.3d
994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999); In re Warner,
397 F.2d 1011, 1016, 154 USPQ 173, 177 (CCPA 1967).
For this reason, we cannot uphold this ground of rejection.
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