Ex parte JOHNSON - Page 8




          Appeal No. 96-0776                                                          
          Application 07/953,539                                                      


          Spinner's outer part is not "separable" from the other elements             
          of the assembled seal, it nevertheless is a "separate" element,             
          albeit connected to the other components, and "separate" does not           
          proscribe all connection with another element (see In re Ruegg,             
          426 F.2d 405, 408, 165 USPQ 711, 714 (CCPA 1970)).  Claim 11 does           
          not require that the sealing element removably fit in the gap               
          between the inner and outer parts.                                          
               Booth teaches making the inner part of a slightly greater              
          thickness than the outer part, so that upon tightening of the               
          flanges the electrical conductivity is improved (column 4, with             
          particular attention to lines 29 through 31).  It is our opinion            
          that one of ordinary skill in the art would have found it obvious           


          to make inner part 10 of the Spinner sealing means of a slightly            
          greater thickness than outer part 13, so that the electrical                
          conduction through the joint is further enhanced.  Booth also               
          teaches making the inner part of a more conductive material than            
          the outer part, to reduce cost (column 2, lines 38 through 54).             
          It is our view that it therefore also would have been obvious to            
          do the same with the Spinner device, as added by claim 15.                  
          Suggestion for both of these modifications is found in the                  
          explicit teachings of Booth.  As for claim 16, from our                     

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