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Motivation for the Federal Circuit Test - page 22 / 35





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other decisions applying the TSM test, it is valuable to note the court’s insistence that a rational, cognizable reason supported by the prior art record be provided.

The examiner in his answer said the only real issue is whether the Mencacci and Aghnides patents "can be combined in rejecting the claims." This quite common but relatively meaningless statement does not state the real issue at all and it is not now and never has been clear what the expression "can be combined" is supposed to mean. The real and only issue under 35 USC 103 is whether the invention as a whole would have been obvious to those skilled in the art at the time Adams made it in view of the state of the art as we are able to glean it from the references cited. Of course all of the references may be used to show what the art knew, and in that sense "combined" but the fact remains that neither reference contains the slightest suggestion to use what it discloses in combination with what is disclosed in the other.

The Patent Office presents a number of hindsight arguments. It says Adams was not the first to use foam for heat transfer as fire departments and fire extinguisher users have been squirting foam on fires for years and housewives have been pouring aerated water on cold plates in the kitchen sink for years, in both of which operations heat transfer is inherent. Of course it is inherent, otherwise appellant's invention would not work. But patentability here does not hinge on inherency. It depends on the unexpected and unsuggested increase in heat transfer efficiency. No reference suggesting this has been produced, only ex post facto explanations as to why anyone should have been able to see that it would be more efficient to use aerated water. But even Adams, with a college degree in chemistry and a doctorate in food technology eight years before he made his invention, explained, after the completion of his invention, that it was not quite clear why the improved efficiency results. The examiner made no attempt to explain why it would be obvious, other than to say aerating or foaming rinse water is commonplace. The board opined that "it is axiomatic that heat transfer will be improved by subjecting articles to be cooled to a stream of cooling liquid with minimum waste by splashing and a stream which is so formed that the contact between the articles and the stream particles is increased." It felt using Aghnides nozzles to reduce splashing and increase contact would be an obvious change in a heat transfer method but we regard this as mere hindsight analysis of appellant's teaching with no basis at all in the absence of access to his teachings. It seems to us that one of the primary objects of Mencacci was to splash water on his cans. In his cooling method, as carried out in his cooler, the wetting is not continuous but intermittent and an important part of the cooling method as described in the Mencacci patent is in the use of air, produced by a blower, to evaporate liquid from the cans after wetting them. He says:

The cool air thus supplied displaces the warm air within the chamber and accelerates the dissipation of heat from the cans by both convection and conduction. * * * The fresh air supplied by the fan therefore promotes evaporation of moisture on the can surfaces, and


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