Appeal No. 2004-1811
Application 10/253,785
was made to one having ordinary skill in the art to form the
steel piston of Jarrett having the following dimensions:
CH=.50-.60 of BD;
TLH=.067-.11 of BD;
SL=.80 of BD; and
SW›.0625 inches=.025-.065 of BD (for piston diameter between
1 and 2.5 inches), as taught by Basic Features of Good
piston Design in combination with Ballheimer et al), for the
purpose of having an optimum piston.
Since it is not inventive to discover optimum or
workable ranges by routine experimentation, where the
general conditions of a claim is disclosed, it would have
been obvious at the time the invention was made to one
having ordinary skill in the art to form the steel piston of
Jarrett having the following dimensions:
ISMD=.42-.55 of BD;
ISW=.03-.08 of BD; and
GA=1.5-2.5 of BD2=the area of the oil gallery;
and GV=.05-.2 of BD2XCH=volume of the oil gallery.
After a careful evaluation of the teachings and suggestions
to be derived by one of ordinary skill in the art from Jarrett,
Ballheimer and the Automotive Industries article, it is our
opinion that the examiner has failed to meet his burden of
establishing a prima facie case of obviousness. More
particularly, we are of the view that the examiner's reasoning in
support of the obviousness rejection on appeal (as expressed on
pages 3-9 of the answer) is based on appellants’ own disclosure
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