Appeal No. 96-3156
Application 08/304,333
In the present instance, for the reasons that follow, we think
that the examiner has lost sight of the claimed invention as a
whole and has improperly focused upon the supposed obviousness of
the differences between the claimed invention and the prior art
cited against the claims.
First, we do not agree with the examiner’s determination
that the valves (39, 47) of Steiner are simultaneously actuated
(answer, page 5). As is made clear by Steiner on page 26, lines
8-20, and as aptly pointed out by appellants on page 16 of the
brief, valves (39) and (47) of Steiner act independently to
achieve their function. This circumstance teaches away from
replacing Steiner’s valves (39) and (47) with a single valve.
Second, the complexity of the Steiner system would require a
complete reworking thereof with no guidance from the cited
references as to how this is to be accomplished in order to bring
about the examiner’s proposed modification. The mere fact that
Arikawa teaches generally that two smaller valves may be replaced
by a single valve is not sufficient in this regard, and it is
improper to rely on the ordinary level of skill in the art to
make up for the deficiencies of Steiner and Arikawa in this
respect. Third, assuming that Steiner’s valves (39) and (47)
could be replaced by a single valve, it is not clear that the
-7-
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007