Appeal No. 2006-1799
Application No. 10/269,955
situation, is not patentable. The issue of obviousness must always be determined on a
case by case basis considering the specific recitations of the claimed invention and the
specific teachings of the applied prior art.
We don’t necessarily disagree with the Examiner’s apparent implied position that
increasing the structural capacity of a heat exchanger would extract more heat from the
gas in the generator housing of Jacobsen. There is no evidence forthcoming from the
Examiner, however, to support the position that increasing heat exchanger physical
capacity would necessarily entail adding a second heat exchanger to Jacobsen’s
existing heat exchanger. For example, adding
physical capacity to the heat exchanger structure in Jacobsen could simply involve
making the existing heat exchanger larger.
We are also of the opinion that even assuming, arguendo, the obviousness of
adding a second heat exchanger to the generator housing of Jacobsen, there is no
indication from the Examiner as to how the mere addition of such a heat exchanger
would satisfy the requirements of independent claims 21 and 29. These claims set forth
a specific dual heat exchanger arrangement requiring a first heat exchanger that
surrounds the stator and a second heat exchanger that is adjacent an end of the stator.
In our view, any suggestion to place a hypothetically added second heat exchanger to
the device of Jacobsen at a location adjacent a stator end as claimed could
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