Appeal No. 2000-1279
Application No. 09/053,025
obviousness is based on a single prior art reference, there
must be a showing of a suggestion or motivation to modify the
teachings of that reference. See In re Kotzab, 217 F.3d 1365,
1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
We turn now to the circumstances in the present appeal.
It is readily apparent to this panel of the Board that the
examiner’s conclusion that appellant’s claimed subject matter
is unpatentable under 35 U.S.C. § 103(a) is simply not
supported by the applied evidence of obviousness. As to claims
10 through 22, the examiner acknowledges that there is no
explicit recitation in the Hitomi reference of engine use in
any automobile (final rejection, page 2). Relative to the
rejection of claims 1
through 9, which applies the Hitomi and Hedelin documents, the
examiner does not focus upon any use in an automobile for the
Hedelin engine. The above deficiency in the references as to
any engine and vehicle relationship whatsoever is particularly
problematic in that each of appellant’s independent claims 1,
10, 18, and 21 expressly requires “an engine maximum power
output to vehicle weight ratio of at least 0.055 kilowatts of
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007