Ex parte LA MOTTE

Board of Patent Appeals and Interferences

Aug 22, 2001

09002808 (B.P.A.I. Aug. 22, 2001)

1 Claims 1 and 10 were amended subsequent to the final
rejection.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT R. LA MOTTE
____________
Appeal No. 2000-1637
Application No. 09/002,808
____________
ON BRIEF
____________
Before COHEN, FRANKFORT, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 5 and 7 to 12, which are all of the
claims pending in this application.1
We REVERSE.
Appeal No. 2000-1637
Application No. 09/002,808
Page 2
BACKGROUND
The appellant's invention relates to a dump valve
operative to immediately substantially reduce or eliminate
pressurized flow at the outlet to prevent damage or injury
without shutting down the source of pressurized fluid
(specification, p. 1). A copy of the claims under appeal is
set forth in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
DeLorenzo 3,563,508 Feb.
16, 1971
Eckerlin 3,633,619 Jan. 11,
1972
Claims 1 to 5 and 7 to 12 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Eckerlin in view of
DeLorenzo.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (Paper No. 12,
Appeal No. 2000-1637
Application No. 09/002,808
Page 3
mailed January 24, 2000) for the examiner's complete reasoning
in support of the rejection, and to the brief (Paper No. 11,
filed November 8, 1999) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 1 to 5 and 7 to
12 under 35 U.S.C. § 103. Our reasoning for this determination
follows.
In rejecting claims under 35 U.S.C. § 103, the examiner bears
the initial burden of presenting a prima facie case of obviousness.
See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Appeal No. 2000-1637
Application No. 09/002,808
Page 4
Cir. 1993). A prima facie case of obviousness is established by
presenting evidence that would have led one of ordinary skill in the
art to combine the relevant teachings of the references to arrive at
the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013, 1016,
173 USPQ 560, 562 (CCPA 1972). Obviousness is tested by "what
the combined teachings of the references would have suggested
to those of ordinary skill in the art." In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). But it "cannot
be established by combining the teachings of the prior art to
produce the claimed invention, absent some teaching or
suggestion supporting the combination." ACS Hosp. Sys., Inc.
v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984). And "teachings of references can be
combined only if there is some suggestion or incentive to do
so." Id.
In our view, the only suggestion for modifying Eckerlin
in the manner proposed by the examiner (answer, pp. 3-5) to
arrive at the claimed subject matter stems from hindsight
knowledge derived from the appellant's own disclosure. The
Appeal No. 2000-1637
Application No. 09/002,808
Page 5
use of such hindsight knowledge to support an obviousness
rejection under
35 U.S.C. § 103 is, of course, impermissible. See, for
example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984). In that regard, we fail to see
any suggestion, teaching or motivation in the applied prior
art to have modified Eckerlin's device to have utilized a
fluid cylinder to move his valve member (i.e., end portion
24).
Moreover, all the claims under appeal require that the
claimed dump valve be capable of handling a pressure of at
least 500 p.s.i. The examiner's position (answer, pp. 4-6)
with regard to this limitation is that Eckerlin's device is
capable of withstanding a pressure of at least 500 p.s.i. and
the operating pressure is an obvious design expedient.
However, the examiner has failed to produce any evidence to
support this position. In our view, Eckerlin's device cannot
be said to be inherently capable of handling a pressure of at
least 500 p.s.i. in his passage 12. Additionally, while the
Appeal No. 2000-1637
Application No. 09/002,808
Page 6
operating fluid pressure in Eckerlin's passage 12 may be an
obvious design expedient (i.e., the pressures that a person of
ordinary skill in the art would have utilized), there is no
evidence that such pressure would be at least 500 p.s.i.
For the reasons set forth above, the decision of the
examiner to reject claims 1 to 5 and 7 to 12 under 35 U.S.C.
§ 103 is reversed.
Appeal No. 2000-1637
Application No. 09/002,808
Page 7
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 5 and 7 to 12 under 35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2000-1637
Application No. 09/002,808
Page 8
DENNIS L. THOMTE
801 GRAND AVENUE
SUITE 3200
DES MOINES, IA 50309
Appeal No. 2000-1637
Application No. 09/002,808
Page 9
JVN/jg