Ex parte FOLEY et al. - Page 11




                  Appeal No. 97-1070                                                                                                                             
                  Application 08/100,418                                                                                                                         


                  crankshaft acceleration (Brief, page 5 and Reply Brief, page 10).  Further, we conclude that it would                                          

                  not have been obvious to modify Wier with Buck’s compression test teaching since that would only                                               

                  result in a compression measurement without the engine running.                                                                                

                            Appellants state that Wier (column 2, lines 2+) suggest detecting "faulty firing" which is                                           

                  unrelated to measuring "compression pressure" as recited in the claims (Brief, pages 9 to 10).  We                                             

                  agree.  We find that Wier, as well as Buck’s power test embodiment, teach detection of faulty engine                                           

                  operation, such as misfiring or lack of fuel, which can be indicative of low compression.  However,                                            

                  Wier and Buck teach concepts which are broader than that claimed in claim 1 on appeal                                                          





                  of determining compression pressure.  In other words, low compression may lead to faulty firing, but                                           

                  faulty firing does not necessarily indicate low compression is present.  Faulty firing could be the result of                                  

                  several other engine difficulties (loss of fuel, failure of ignition circuit, etc.).  Therefore, we find that                                  

                  representative claim 1 on appeal, which is specifically directed toward determining compression (and                                           

                  not the broader concept of faulty firing) is narrower in this respect than what is taught or would have                                        

                  been suggested by the references relied on by the examiner.                                                                                    

                            Appellants argue that Ina relates to detecting a torque variation, and not a compression                                             

                  measurement as claimed (Brief, pages 10 to 11), because Ina (column 2, lines 49+) measures torque                                              


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