Appeal No. 2004-2154 Page 4
Application No. 10/067,049
We, like appellants, find no support for the examiner’s position that Pradel’s
bottom valve 4a reduces flow from the equalizing space to the working space as called
for in claim 7. While movement of the piston rod outward creates a negative pressure
in the lower working space, thereby opening the bottom valve and drawing damping
medium from the equalizing space to the working space, Pradel provides no disclosure
that the bottom valve comprises structure which reduces flow as the piston rod moves
outward.2 Accordingly, the subject matter of appellants’ claim 7 cannot be considered
to be anticipated3 by Pradel.
With regard to the rejection of claims 8 and 9 as being anticipated by Pradel, we
likewise find no support in Pradel for the examiner’s position that the predetermined
breaking point recited in claim 8 “can be readable as the valve disc on the bottom valve
4a, which breaks to open a bypass connecting said at least one working space to said
equalizing space when damping medium exceeds a predetermined pressure in said
working space” (answer, page 4). Pradel provides no indication that any portion of the
bottom seal 4a, including the flexible disc thereof which presumably flexes under
pressure to allow fluid flow through the valve, is designed to break when the damping
2 The Alliquant patent (U.S. Pat. No. 3,958,673) referred to by the examiner on page 6 of the
answer has been given no consideration in deciding this appeal since it was not positively included in the
statement of the rejection. See In re Hoch, 428 F.2d 1341, 1342 n. 3, 166 USPQ 406, 407 n. 3 (CCPA
1970).
3 To anticipate, every element and limitation of the claimed invention must be found in a single
prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376,
1383, 58 USPQ2d 1286, 1291 (Fed. Cir. 2001); Scripps Clinic & Research Foundation v. Genentech, Inc.,
927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
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