Appeal No. 95-4616
Application 08/200,932
The Rejection of Independent Claim 10
Independent claim 10 stands rejected as being unpatentable over the Japanese
reference. The test for obviousness is what the combined teachings of the prior art
would have suggested to one of ordinary skill in the art. See In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). The appellant has argued that the structure
recited in the last five lines of this claim is not present in the reference, and we agree.
The cited portion of the claim requires that each caging member have a plurality
of valved openings, and than one of the caging members have a lesser number of
valved openings that the other (see Figure 6, for example). Such is not the case with
the caging members disclosed in the Japanese reference, where both have the same
number of valved openings. We are not persuaded by the examiner’s assertion that
the number of openings would have been an obvious expedient to one of ordinary skill
in the art, in the face of the appellant’s discussions regarding his objective of providing
a fuel mixture with certain desirable characteristics which improve the operation of the
engine (specification, pages 3-5; substitute Brief, pages 4-8).
It therefore is our conclusion that the teachings of the Japanese reference fail to
establish a prima facie case of obviousness with regard to the subject matter recited in
claim 10. Thus, we will not sustain the rejection of independent claim 10 or, it follows,
of claims 11-18, 24 and 26-28, which depend therefrom.
The Rejection of Independent Claim 33
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