Appeal No. 1997-0350
Application No. 08/191,384
established no more than that it would have been obvious for
one of ordinary skill in the art to try to modify the relative
locations of Law's throttle and shut-off valves in order to
determine the advantages and disadvantages of doing so.
The examiner cites In re Japikse, 181 F.2d 1019, 86 USPQ
70 (CCPA 1950) for the general proposition that "a mere
shifting the location of parts" of an apparatus is a matter of
obviousness for the skilled artisan (page 4 of Answer).
However, our review of the case reveals no such proposition or
rule of law. In relevant part, the court stated:
As to that limitation it was held that there would
be no invention in shifting the starting switch
disclosed by Cannon to a different position since
the operation of the device would not thereby be
modified.
We find no error in the holding as to claim 3.
Japikse, 181 F.2d 1019, 1023, 86 USPQ 70, 73 (CCPA 1950). We
think it is quite clear that Japikse is limited to the facts
of the case, i.e., the position of the starting switch is
immaterial and, therefore, obvious, since the overall
operation of the device would not be affected by such change.
In the present case, the examiner has not established that the
same could be said for changing the relative locations of
Law's throttle and shut-off valves.
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