Ex parte GRUDEN et al. - Page 6




          Appeal No. 97-1147                                                          
          Application 08/349,087                                                      


          the                                                                         
          centrifugal clutch therein as proposed by the examiner. The                 
          mere                                                                        
          fact that one of ordinary skill in the art, once informed of                
          the desirability of making a magnetic decoupling means of the               
          type defined in appellants' claims on appeal, could achieve                 
          this result through the application of routine skill in the                 
          art, provides no evidence that such a modification would have               
          been obvious to those of ordinary skill in the art at the time              
          of appellants' invention, absent reliance upon appellants' own              
          disclosure.  Moreover, as appellants have pointed out on page               
          11 of their brief, the examiner's proposed modification of the              
          clutch in Kagiyama would appear to be contrary to the express               
          teachings of that patent regarding the desired simplicity of                
          construction, reduced numbers of parts, and inexpensive                     
          manufacturing discussed therein (see Col. 1, lines 21-25 of                 
          Kagiyama).                                                                  

          From our perspective, only hindsight based on appellants'                   
          own teachings would have provided any reason for one of                     
          ordinary skill in the art to consider a modification in the                 

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