Ex parte DOMINGUEZ - Page 10




          Appeal No. 95-4860                                                          
          Application No. 08/044,923                                                  


          disclosures of O’Connor and Streich and claims 20-22 based on               
          the combined disclosures of O’Connor, Streich and Leroy.                    
               Under the provisions of 37 CFR § 1.196(b) we make the                  
          following new rejections.                                                   
               Claims 18-22 are rejected under 35 U.S.C. § 112, first                 
          paragraph, as being based upon a nonenabling disclosure since               
          the appellant’s disclosure provides no teaching of how to                   
          “make and use” an embodiment wherein the second pressure plate              
          is threadably coupled to the third end of the second shaft as               
          claim 18 sets forth.  Viewing Fig. 2 of the appellant’s                     
          disclosed embodiment, a resilient sealing material 61 is                    
          positioned between  a fixed or first pressure plate 40 and a                
          second or movable pressure plate 41 and movement of the                     
          movable or second pressure plate towards the fixed or first                 
          pressure plate causes the resilient material to expand against              
          the inner surface 72 of the pipeline.  If, as this claim sets               
          forth, the second or movable pressure plate was threadably                  
          coupled to the second shaft, then no movement of the second                 
          pressure plate toward the first pressure plate could occur                  
          unless somehow (1) the second shaft 12 was reciprocated                     


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