Ex parte VIRON - Page 2

                Appeal No. 1997-1796                                                                                                           
                Application 08/422,491                                                                                                         

                be interpreted by one of ordinary skill in this art, see In re Morris, 127 F.3d 1048, 1054-55, 44                              
                USPQ2d 1023, 1027 (Fed. Cir. 1997), which would even lead to consideration of whether the claim                                
                language signifies that a “Jepson” claim format may be intended.2  Thus, we reverse this ground of                             
                         Turning now to the grounds of rejection based on Oas,3 we find that not until the discussion of                       
                appellant’s arguments at pages 5-6 of the answer does the examiner explain the basis for his finding that                      
                the reference anticipates appealed claim 1 under 35 U.S.C.  102(b).  Appellant submits (brief, page 6)                        
                that the “helical surface of the check ring 31 [in Oas] does not provide any re-centering effect of the                        
                valve” and argues that this structure in Oas does not correspond to or perform the function defined by                         
                the limitations in claim 1 that the “check valve includes a seat that is orientated at a given angle to said                   
                longitudinal axis” and the “support points [of the pin] are formed by flats oriented at said given angle                       
                such that when said flats come into engagement with said seat said screw point is aligned about said                           
                longitudinal axis” (emphasis supplied).  The examiner responds that the appealed claims do not contain a                       
                limitation with respect to “recentering” and finds, inter alia, that the “support points [of the pin] formed                   
                by flats orientated at said given angle wherein said flats engage with said front seat [of the check valve]                    
                so that said screw point is aligned about said longitudinal axis,” pointing out that “since Oas meets all of                   
                the claimed limitations, a re-centering effect (although not claimed) is achieved” (id., page 6).  The                         
                examiner explains, in this respect, that “[a]s shown in [Oas] Figure 8B, flats of pin 65 engage with [sic]                     
                front seat of check ring 31” (id.).                                                                                            
                         We have carefully compared the limitations of appealed claim 1 with the disclosure of Oas in                          
                light of the examiner’s discussion of this reference and find that we agree with appellant.  We interpret                      
                the plain language of the limitations of claim 1 set forth above in light of the specification (e.g., pages 4                  
                and 6, and specification Figure 4) as it would be interpreted by one of ordinary skill in the art, see                         
                Morris, supra, to specify that the orientation of the seat of the check valve and of the flats is at an angle                  

                1  Amendment of March 8, 1996 (Paper No. 7).                                                                                   
                2  The examiner has dropped his criticism of the term “piston” (answer, page 5).                                               
                3  The references relied on by the examiner with respect to the grounds of rejection are listed at pages                       
                2-3 of the answer.                                                                                                             

                                                                     - 2 -                                                                     

Page:  Previous  1  2  3  4  5  Next 

Last modified: November 3, 2007