Appeal No. 2004-1811
Application 10/253,785
and teachings, uses appellants’ claim 1 as a road map to seek out
and combine disparate features or dimensional relationships from
essentially unrelated prior art references, and clearly relies
upon impermissible hindsight in attempting to reconstruct
appellants’ claimed invention. Basically, we share appellant’s
views as aptly expressed in the brief (pages 3-6) and reply brief
concerning the examiner’s attempted combination of the clearly
disparate steel monobloc piston of Jarrett, the aluminum alloy
piston of the Automotive Industries article and the two part
articulated piston assembly of Ballheimer comprising a steel
upper piston member (78) and a forged aluminum piston skirt (80).
As for the examiner’s reliance on § 2144.05 of the MPEP as
support for the above-noted rejection, we observe that the
examiner has not established that each of the various dimensional
relationships specified in appellants’ claim 1 on appeal, and
found lacking in Jarrett, has been recognized in the prior art
relied upon as a result-effective variable and is therefore an
appropriate parameter that may be subject to optimization based
on routine experimentation. In addition, we note that the
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