Ex parte Lavin

Board of Patent Appeals and Interferences

Jul 24, 1998

08404666 (B.P.A.I. Jul. 24, 1998)

Application for patent filed March 15, 1995. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN T. LAVIN
____________
Appeal No. 97-4429
Application No. 08/404,6661
____________
ON BRIEF
____________
Before COHEN, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 12 through 21, which are all of the claims
pending in this application. On page 2 of the brief, the
appellant states that the rejection of claims 14 and 18 is not
being appealed. Consequently, the appeal is dismissed with
respect to claims 14 and 18. Claims 12, 13, 15 through 17 and 19
through 21 remain on appeal.
Appeal No. 97-4429
Application No. 08/404,666
We REVERSE.
Appeal No. 97-4429 Page 3
Application No. 08/404,666
BACKGROUND
The appellant's invention relates to an air separation
plant. An understanding of the invention can be derived from a
reading of exemplary claims 12 and 17, which appear in the
appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Smith 3,127,260 Mar. 31, 1964
Sunder et al. (Sunder) 5,122,174 June 16, 1992
Collin et al. (Collin) 5,316,628 May 31, 1994
Claims 12, 13, 15 and 17, 19 and 20 stand rejected under
35 U.S.C. § 103 as being unpatentable over Collin in view of
Smith.
Claims 16 and 21 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Collin in view of Smith and Sunder.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper No.
13, mailed July 3, 1997) for the examiner's complete reasoning in
Appeal No. 97-4429 Page 4
Application No. 08/404,666
support of the rejections, and to the appellant's brief (Paper
No. 12, filed April 2, 1997) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
With regard to the 35 U.S.C. § 103 rejection of independent
claims 12 and 17 as being unpatentable over Collin in view of
Smith, the examiner concluded (answer, pp. 5-6) that it would
have been obvious to one of ordinary skill in the art to employ
the "condenser/reboiler heat exchanger" of Collin as the
"condenser/reboiler heat exchanger" of Smith (i.e., Smith's
condensers 20, 22) in the air separation system of Smith. We do
not agree.
Appeal No. 97-4429 Page 5
Application No. 08/404,666
The teachings of Smith and Collin are set forth on pages 4-5
of the answer.
It is axiomatic that obviousness cannot be established by
combining the teachings of the prior art to produce the claimed
invention, absent some teaching, suggestion or incentive
supporting such combination. See In re Bond, 910 F.2d 831, 834,
15 USPQ2d 1566, 1568 (Fed. Cir. 1990).
We agree with the appellant that the applied prior art fails
to provide the needed suggestion or motivation to one of ordinary
skill in the art at the time of the appellant's invention to
modify the applied prior art as proposed by the examiner. That
is, we agree that the combined teachings of the applied prior art
would not have resulted in the substitution of Collin's device
for the condensers 20, 22 of Smith. In fact, the examiner relies
on condenser 20 of Smith to be the subcooler recited in claim 1
and to perform the subcooling step recited in claim 17.
Furthermore, we see no suggestion or motivation, absent
impermissible hindsight, to substitute Collin's device for the
condenser 22 of Smith. Accordingly, we will not sustain the
35 U.S.C. § 103 rejection of claims 12, 13, 15, 17, 19 and 20.
Appeal No. 97-4429 Page 6
Application No. 08/404,666
We have also reviewed the Sunder reference additionally
applied in the rejection of claims 16 and 21 but find nothing
therein which makes up for the deficiencies of Collin and Smith
discussed above. Accordingly, we cannot sustain the examiner's
rejection of appealed claims 16 and 21 under 35 U.S.C. § 103.

CONCLUSION
To summarize, the decision of the examiner to reject claims
12, 13, 15 through 17 and 19 through 21 under 35 U.S.C. § 103 is
reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-4429 Page 7
Application No. 08/404,666
THE BOC GROUP, INC.
PATENT, TRADEMARK AND LICENSING DEPARTMENT
100 MOUNTAIN AVENUE
MURRAY HILL
NEW PROVIDENCE, NJ 07974
APPEAL NO. 97-4429 - JUDGE NASE
APPLICATION NO. 08/404,666
APJ NASE
APJ McQUADE
APJ COHEN
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 14 Jul 98
FINAL TYPED: