Appeal No. 96-3298
Application 08/361,284
Karlson was not intended to short circuit the determination of
obviousness mandated by 35 U.S.C. § 103. In re Wright, 343
F.2d 761, 769-70, 145 USPQ 182, 190 (CCPA 1965). We do not
agree with the examiner’s position to the extent it advocates
that the use of a single controller drum for opening or
closing each of the shorter pipes is not a patentable
distinction with respect to Miyano’s intake manifold for a V-
type engine. To the contrary, it appears that appellants have
eliminated one of Miyano’s valve shafts while retaining its
function (i.e., controlling the opening and closing of the
affected shorter inlet pipes) by arranging the inlet pipes in
a manner which allows use of a single controller. Such
elimination of an element (the second valve shaft) while
retaining its function is indicative of unobviousness, and we
find nothing in the applied prior art which would indicate
otherwise. See In re Fleissner, 264 F.2d 897, 900, 121 USPQ
270, 271 (CCPA 1959) (“it may be unobvious to omit an element
while retaining its function”), and Richards v. Chase Elevator
Co., 159 U.S. 477, 486, 1895 Dec. Comm’r of Pats., 728, 729
(“the omission of an element in a combination may constitute
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