Appeal No. 2006-0576
Application No. 10/284,473
any other heat sink material, is used for the heat recovery unit heat sink.
Further, while it is well settled, as alluded to by the Examiner (Answer, pages 12
and 13) that features of prior art references may be combined for a different reason than
that of a claimed invention, the Examiner has the burden of showing that the stated
rationale for a proposed combination has some basis in fact. In the present factual
situation, no evidence is forthcoming from the Examiner that would indicate how the
stated motivation rationale, i.e., improved heat absorbance by having a larger surface
area, would result from the modification of Glaus with the teachings of Hampden. The
Examiner must not only make requisite findings, based on the evidence of record, but
must also explain the reasoning by which the findings are deemed to support the
asserted conclusion. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34
(Fed. Cir. 2002). In our view, given the disparity of problems addressed by the applied
prior art references, and the differing solutions proposed by them,
any attempt to combine them in the manner proposed by the Examiner could only come
from Appellant’s own disclosure and not from any teaching or suggestion in the
references themselves.
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007