Appeal 2007-1801
Application 10/156,917
that the reflux condensers disclosed in Heere and in the prior art are operable
to cause a component of a vapor flowing therethrough to condense from a
gas to a liquid, and allow the liquid component to fall into a fractionation
zone under force of gravity while allowing the vapor to escape the
condenser. Reply 3. Appellants point out that the heat exchangers disclosed
in Gentry and Small are not concerned with fractionation at all and are not
operable to condense a component of a vapor and allow the condensed liquid
to flow into a fractionation zone against the stream of the vapor while
allowing the vapor to escape. Reply 3.
The teaching of a reference is not limited to the specific invention
disclosed. In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1337 (Fed. Cir.
2006). Thus, the motivation to modify or combine references is not limited
to the reasons contemplated by the inventor. See KSR Int’l Co. Teleflex,
Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
(“[A]nalysis [of whether the subject matter of a claim is obvious] need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.”)). See also,
In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992)
(“As long as some motivation or suggestion to combine the references is
provided by the prior art taken as a whole, the law does not require that the
references be combined for the reasons contemplated by the inventor.”)
In this case, the Examiner established that both Gentry and Small are
reasonably pertinent to the problem of preventing tube damage and
improving heat transfer in a U-tube bundle/baffle arrangement. See Findings
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