Ex parte ROMANN - Page 12




          Appeal No. 97-3717                                        Page 12           
          Application No. 08/397,163                                                  


          or more preferably formed of ceramic having specific gravity                
          of about 2 to 4.  Kamiya teaches (column 4, lines 57-64) that               
               [s]ince the slide member 33 is of a hollow cylindrical                 
               shape and the valve member 32 and the slide member 33 are              
               formed of a light material such as titanium, the valve                 
               body 31 is reduced in weight, thereby increasing the                   
               response characteristic to the on-off operation of the                 
               exciting coil and reducing the time required for the                   
               valve body to be stabilized when the valve is opened or                
               closed.                                                                


               In applying the above-noted test for obviousness, the                  
          examiner determined (final rejection, p. 3) that                            
               [i]t is deemed to have been obvious to one of ordinary                 
               skill in the art to construct the valve stem [of                       
               Terakado] from titanium as taught by Kamiya to reduce the              
               valve stem weight and increase [sic, decrease] the                     
               response time of the valve in Terakado.                                

               Implicit in this rejection is the examiner’s view that                 
          the above noted modification of Terakado would result in an                 
          apparatus which corresponds to the apparatus recited in claim               
          9 in all respects.                                                          


               Initially, we note that the appellant has not argued that              
          the material of the valve seat carrier does not have a larger               
          coefficient of thermal expansion than the material of the                   







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