Appeal No. 2003-1757
Application 10/003,202
encountered” (brief, page 5, citing Cummings, col. 1, lines 16-21; emphasis in original deleted).
In the reply brief, appellant argues that the only prior art poppet valves of record other than
Cummings are in specification Figs. 14 and 15, each of which “are completely devoid of any
disclosure or suggestion of the” structure of the claimed poppet valve encompassed by the
limitations of appealed claim 1 (page 3; original emphasis deleted). Appellants further contend
that the structure of the poppet valve depicted in Cummings Fig. 1 is disclosed therein “only in
combination with ‘integral ribs or fins 13’” as disclosed in col. 3, lines 28-30, of Cummings,
which in appellant’s view, follows from the teachings in cols. 1 and 3 of the reference (reply
brief, pages 3-4; original emphasis deleted).
We agree with the examiner that the modification of the poppet valve of Cummings Fig.
1 as proposed would have resulted in the structure of the claimed poppet valve as defined in
appealed claim 1, because of the structure in the fillet area, the weld joint and the absence of a
limitation on the dome or cap. However, such a modification would have been prima facie
obvious only if the teachings of Cummings reasonable would have suggested the claimed subject
matter to one of ordinary skill in the art, and in the absence of such a suggestion, the mere fact
that the prior art can be modified as proposed by the examiner is not sufficient to establish a
prima facie case. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir.
1992); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
On this record, we agree with appellant that the bracing fins 13 are an integral part of the
poppet valve as disclosed by Cummings and indeed, in the absence of such bracing fins, it is
apparent that the so modified poppet valves would be unsatisfactory for the purpose intended
therefor by Cummings. Consequently, we conclude that the examiner has not adduced on this
record any suggestion or motivation which would have led one of ordinary skill in the art to
make the proposed modification. See Fritch, supra; Gordon, supra.
And, second, the examiner contends that while Cummings is silent with respect to the
“valve face having an HV of at least 300 formed around said fire contacting face of said fillet
area,” one of ordinary skill in the art would have weld-applied an alloy composition to the valve
face as shown buy Takano in a similar internal combustion engine poppet valve (answer, pages
5-6). Appellant argues that the limitation “integrally formed from a same metal” requires that the
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