Appeal No. 2005-2180 Page 2
Application No. 10/051,417
teaches, not just the preferred embodiments, and a teaching of the preferred
embodiment is not a "teaching away" from the unpreferred embodiment. In re
Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 70 (CCPA 1979); In re Lamberti, 545
F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976); and In re Mills, 470 F.2d 649, 651,
176 USPQ 196, 198 (CCPA 1972).
Regarding Group II, we select claim 2 as representative. Appellants argue
A[t]he fact that at the time of the invention, adhesives existed which had appropriate
adhesive strength to function in this manner is irrelevant as no one had imagined
using an adhesive in such a manner, and it is incumbent for the Final Rejection to
provide some motivation in the art which clearly suggests to one skilled in the art that
such an adhesive be used to bond and hold a valve cover on an engine cylinder
head.@ (Brief, p. 9).
Appellants argument is not persuasive. As stated above, Mochizuki discloses
adhesives suitable for bonding and holding a valve cover on an engine cylinder head.
Further, as indicated above by the Appellants, persons of ordinary skill in the art
would have known that adhesives exist which have the required adhesive strength
properties to replace bolts. Persons of ordinary skill in the art viewing the Mochizuki
would have recognized that the disclosed adhesives could have been used in for the
seal between the head cover and engine head. Those skilled in the art would have
recognized the appropriate pressure requirements of an engine operating under
normal conditions and select the an adhesive disclosed by Mochizuki to be suitable
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007