Appeal No. 2003-1757
Application 10/003,202
Turning now to the ground of rejection under § 103(a), it is well settled that in order to
establish a prima facie case of obviousness under § 103(a), the examiner must show that some
objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in this art would have led that person to
the claimed invention as a whole, including each and every limitation of the claims arranged as
required by the claims, without recourse to the teachings in appellant’s disclosure. See generally,
In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool
Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir.
1996); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re
Laskowski, 871 F.2d 115, 10 USPQ2d 1397 (Fed. Cir. 1989); In re Fine, 837 F.2d 1071, 1074-
76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988).
We need only discuss the examiner’s application of the combined teachings of Cummings
and Takano to appealed claim 1 with respect to our decision. The examiner submits that one of
ordinary skill in this art would have made two changes in the poppet valve of Cummings Fig. 1
in order to arrived at the claimed poppet valve encompassed by appealed claim 1. First, the
examiner contends that it would have been obvious to one of ordinary skill in the art to eliminate
ribs or fins 13 from the poppet valve and their function of bracing thin-walled head dome 11 as
depicted in Cummings Figs. 1 and 2 (Cummings, e.g., cols. 1 and 3) in order to increase
resistance to engine strains, because the “omission of an element and its function in a
combination where the remaining elements perform the same functions as before involves only
routine skill in the art” (answer, pages 5 and 8). The examiner further supports has position by
pointing out that Cummings “implicitly teaches that hollow poppet valves without internal
bracing are known in the prior art to be used in engines with lesser pressure and strains,” and to
“appellant’s admission of prior art (Fig, 14) clearly shows that hollow poppet valves without
internal bracing are known” (answer, pages 5 and 8).
Appellant points to the claim limitation that the “cap is supported solely by said fillet area
and said weld joint without internal bracing” in contrast to the teaching in Cummings that “thin-
walled head domes, if unsupported across their entire span, are not capable of withstanding the
high pressure to which they are subjected . . . [and] collapse of thin-walled head domes has been
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