Appeal No. 1997-4373 Page 11
Application No. 08/332,656
Turning finally to the examiner's 35 U.S.C. § 103
rejection of claims 23, 25 and 26 as being unpatentable over
Masahiko in view of Abe, the examiner finds that the spill
passage (58, 59, 60) of Masahiko does not intersect the bore
"at a point intermediate the ends of the stroke of said
plunger" as required by claim 23. However, the examiner
points out that Abe teaches an embodiment (Figure 12) of a
pump having a pressure relief passage (26) between the ends of
the plunger stroke and asserts that it would have been obvious
to modify Masahiko "by placing the spill in an intermediate
position because the effect would have been the same and this
approach was commonly used" (answer, page 6). As explained
below, we cannot agree with the examiner that the effect would
have been the same.
Where the proposed modification would render the prior
art invention being modified unsatisfactory for its intended
purpose, the proposed modification would not have been
obvious. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984).
To move the spill passage of Masahiko to a point
intermediate the ends of the plunger stroke would render the
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