Appeal No. 96-0776
Application 07/953,539
together by bonding the metal parts to the rubber sealing element
(column 5, lines 34 through 38) to form "a one-piece gasket"
(Abstract). It is the examiner's position, however, that the
elements of the Domnikov seal "are capable of being separated or
removed if enough force is applied," and thus meet the terms of
the claims (Answer, paragraph bridging pages 8 and 9). We do not
agree with this theory, which the examiner has not supported by
citation to law, and by which, in the words of the appellant,
"the very essence of the applicant's invention has effectively
been read right out of the claims" (Brief, page 16). We
therefore will not sustain this rejection.
The anticipation rejection based upon Spinner meets the same
fate for the same reason, in that the three components of the
Spinner waveguide seal are secured together by vulcanization
(translation, page 2), and therefore are neither separable nor
removable. This rejection of independent claims 1 and 12 and
dependent claims 2, 5, 6, 8 and 9 is not sustained.
The remaining rejections are under 35 U.S.C. § 103. Here,
the examiner bears the initial burden of presenting a prima facie
case of obviousness (see In re Rijckaert, 9 F.3d 1531, 1532, 28
5
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