Appeal No. 2004-0481
Application 09/783,260
would have “substituted the water supply of Strong with the tank of [Flores] for portability (see
column 1, lines 5-10 for motivation)” (answer, pages 3-4), the cited passage from Flores
disclosing that the invention therein is “a portable pressurized reservoir supply tank.”
Appellant argues that the combined teachings of the applied references would not have
disclosed that air relief valve 24 removes air from transfer tube 46 during fluid flow through this
conduit as shown in Strong FIGs. 2 and 4 (brief, pages 6-8). The examiner responds that the
“primary function [of air relief valve 24] is to allow air to escape from conduit 18 and/or 46
and/or 78” (answer, pages 6-7).
We agree with appellant. We find no disclosure in Strong FIGs. 2, 4 and 5 as explained
in Strong (cols. 3-5), which would have taught one of ordinary skill in this art that air relief valve
24 is fluidly connected to any conduit from its position in tank 18, in which the purpose thereof
as disclosed by Strong, is to “allow for the escape of fluid displaced vessel air as the level raises
above the level of the open end of trickle tube 58” (col. 5, lines 3-6; see also col. 2, line 61, to
col. 3, line 6). Indeed, one of ordinary skill in this art would have recognized that the “vessel” is
tank 18, and would have further recognized from FIGs. 2 and 5 that there is no connection,
directly or functionally, between air relief valve 24 and the fluid flowing through transfer tube 46
in tank 18 to which hose inlet 78 is attached.3 Thus, even if one of ordinary skill in this art
would have attached the tank of Flores to hose inlet 78 of transfer tube 46 of tank 18, as the
examiner argues, this person still would not have arrived at the claimed invention encompassed
by appealed claim 1. See Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54,
5 USPQ2d 1434, 1438-41 (Fed. Cir. 1988).
Accordingly, on this record, we conclude that the examiner has failed to establish a prima
facie case of obviousness over the combined teachings of the applied prior art, and accordingly,
we reverse the first ground of rejection.
3 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see Fritch, 972 F.2d at 1264-65, 23 USPQ2d at 1782-83; In re Preda, 401 F.2d 825,
826, 159 USPQ 342, 344 (CCPA 1968); Aller, 220 F.2d at 458-59, 105 USPQ at 237, presuming
skill on the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir.
1985).
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