Appeal No. 2000-1637 Page 5
Application No. 09/002,808
use of such hindsight knowledge to support an obviousness
rejection under
35 U.S.C. § 103 is, of course, impermissible. See, for
example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984). In that regard, we fail to see
any suggestion, teaching or motivation in the applied prior
art to have modified Eckerlin's device to have utilized a
fluid cylinder to move his valve member (i.e., end portion
24).
Moreover, all the claims under appeal require that the
claimed dump valve be capable of handling a pressure of at
least 500 p.s.i. The examiner's position (answer, pp. 4-6)
with regard to this limitation is that Eckerlin's device is
capable of withstanding a pressure of at least 500 p.s.i. and
the operating pressure is an obvious design expedient.
However, the examiner has failed to produce any evidence to
support this position. In our view, Eckerlin's device cannot
be said to be inherently capable of handling a pressure of at
least 500 p.s.i. in his passage 12. Additionally, while the
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007