Appeal No. 1997-0668
Application No. 08/232,854
evidence (i.e., the here applied Niimi patent) which reflects
that his disclosed use of a piston would be known to those
skilled in the art and thus enabled. In re Howarth, 654 F.2d
103, 105, 210 USPQ 689, 691 (CCPA 1981). Finally, the record
before us contains utterly no evidence of concealment by the
appellant as required by the best mode provision of § 112,
first paragraph. Spectra-Physics v. Coherent, 827 F.2d 1524,
1535, 3 USPQ2d 1737, 1745 (Fed. Cir. 1987).
For the above stated reasons, the examiner’s rejection of
the claims on appeal under the first paragraph of 35 U.S.C. §
112 cannot be sustained.
We also cannot sustain the examiner’s § 103 rejection of
the claims on appeal as being unpatentable over Japanese ‘018
or Niimi taken with Nichols. In essence, we agree with the
appellant’s basic position that, even if one with an ordinary
level of skill in the art were to combine the applied
references, the resulting combination would not correspond to
the method defined by the appealed claims. Specifically, the
applied references whether taken individually or in
combination simply would not have suggested the here claimed
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