Ex parte SEKI - Page 8




                     Appeal No. 1998-2064                                                                                                                                              
                     Application 08/710,551                                                                                                                                            


                     combination comes from the teachings of the references and not                                                                                                    
                     from the use of impermissible hindsight.                                                                                                                          
                                While we appreciate the points the examiner is attempting                                                                                              
                     to make with respect to what one of ordinary skill in the art                                                                                                     
                     would have learned from the teachings of Becker and Markus, we                                                                                                    
                     do not believe the ordinarily skilled artisan would have been                                                                                                     
                     led to modify the Becker device to arrive at the subject                                                                                                          
                     matter of claim 5 in the absence of appellant’s disclosure.                                                                                                       
                     Conceding for the sake of argument that Markus teaches                                                                                                            
                     generally that a female threaded member may be resiliently                                                                                                        
                     mounted in order to absorb shocks, it is not clear to us why                                                                                                      
                     one of ordinary skill in the art would have applied this                                                                                                          
                     general teaching in Becker in the particular way and at the                                                                                                       
                     particular location called for in claim 5.  This is especially                                                                                                    
                     so in that Becker discloses not one but two fixably mounted                                                                                                       
                     female threaded members , in that Becker’s        2                                                                                                               






                                2Note the presence of lead nut 92 in addition to                                                                                                       
                     internally threaded roller nut 74.                                                                                                                                
                                                                                          8                                                                                            





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