Appeal No. 2006-2154 Page 7
Application No. 10/786,998
inventor, would have been led to make the combination
recited in the claims. From this it may be determined
whether the overall disclosures, teachings, and
suggestions of the prior art, and the level of skill in the
art – i.e., the understandings and knowledge of persons
having ordinary skill in the art at the time of the
invention-support the legal conclusion of obviousness.
(internal citations omitted).
Id. at 988, 78 USPQ2d at 1337. We find that a person of ordinary skill in the art,
possessed with the understandings and knowledge reflected in the prior art, would
have been led to make the combination recited in the claims. In particular, both
prior art references acknowledge the common solution of using engineering
ceramics to alleviate wear, and both references disclose that it was known in the art
to use ball valves and disc slide valves for the same purpose.3 Because the
appellant admits that these two prior art valves are used for the same purpose, and
because the prior art Berchem ‘004 reference teaches that the valves can be made
from the same engineering ceramic materials, we hold that it would have been
obvious to one of ordinary skill in the art at the time the invention was made use
quartz glass for the engineering ceramic to reduce wear, as taught by Berchem
‘427, in a disc slide valve. As such, we find that the examiner established a prima
facie showing of obviousness of claim 1. The appellant did not separately argue
the patentability of the remaining rejected dependent claims 2 and 3. As such, we
treat these claims as standing or falling together with claim 1.
The appellant attempts to rebut the examiner’s prima facie showing by
arguing that Berchem ‘004 teaches away from using the same material for the
3 The appellant also admits on page 3 of the Brief that “both structures can be used for the same
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