Appeal No. 1999-1960
Application No. 09/075,631
of ordinary skill in the art, in light of that reference’s
teachings, would have indiscriminately eliminated the cycling
operation of that reference, along with its time delay means,
because in so doing it would appear that one would be required
to disregard and abandon one of the expressly stated
objectives of Frantz, namely, to minimize the loss of pressure
in the reservoir. Consequently, the examiner’s attempt to
justify the proposed elimination of the cycling operation of
Frantz by rationalizing that “if one of ordinary skill in the
art is not concerned with the loss of air pressure, he would
have found it obvious to eliminate the cycled operation”
(answer, page 3) is not well taken. In this regard, the
examiner has not explained why one of ordinary skill in the
art, in light of the teachings of Frantz, would have
considered the loss of air pressure to be of no concern. The
Court of Appeals for the Federal Circuit clearly stated that
it is erroneous to consider the references in less than their
entireties, i.e., to disregard disclosures in the references
that diverge from and teach away from the invention at hand.
W. L. Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d
11
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