Ex parte LA MOTTE - Page 5




          Appeal No. 2000-1637                                       Page 5           
          Application No. 09/002,808                                                  


          use of such hindsight knowledge to support an obviousness                   
          rejection under                                                             
          35 U.S.C. § 103 is, of course, impermissible.  See, for                     
          example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721                 
          F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.               
          denied, 469 U.S. 851 (1984).  In that regard, we fail to see                
          any suggestion, teaching or motivation in the applied prior                 
          art to have modified Eckerlin's device to have utilized a                   
          fluid cylinder to move his valve member (i.e., end portion                  
          24).                                                                        


               Moreover, all the claims under appeal require that the                 
          claimed dump valve be capable of handling a pressure of at                  
          least 500 p.s.i.  The examiner's position (answer, pp. 4-6)                 
          with regard to this limitation is that Eckerlin's device is                 
          capable of withstanding a pressure of at least 500 p.s.i. and               
          the operating pressure is an obvious design expedient.                      
          However, the examiner has failed to produce any evidence to                 
          support this position.  In our view, Eckerlin's device cannot               
          be said to be inherently capable of handling a pressure of at               
          least 500 p.s.i. in his passage 12.  Additionally, while the                







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