Appeal 2006-1326 Application 09/919,326 substantially the same shape as the interior surface of the cavity prior to insertion into the cavity” (Br. 8). Appellants further argue, with regard to the method claims, that since Hayashi discloses that R2 (i.e., the outside diameter of the rear end of outer cylinder 16) is “much larger” than R1 (i.e., the inside diameter of seal cylinder 1) in the Figure 1 embodiment, Hayashi’s sealing surface (i.e., the outer surface of outer cylinder 16) cannot be “substantially the same shape as the interior surface of the cavity” (Br. 9). The Examiner responds that the recitation of “for sealing a cavity” in the device claims is “considered as the intended use of the device” (Answer 5). The Examiner indicates that Appellants do not “positively claim the internal cavity” such that the “manner in which an apparatus is intended to be employed does not impose any structural limitation upon the claimed apparatus, which differentiates it from a prior art reference disclosing the structural limitations of the claim” (Answer 5). The Examiner also states that Hayashi’s rubber plug 3 is used to seal a cavity of a seal cylinder (1) such that the sealing surface of Hayashi’s rubber plug 3 has “. . . substantially the same shape as the interior surface of the cavity . . .” (Answer 5-6). Regarding the method claims, the Examiner contends that when the claimed method is practiced, Hayashi’s device functions in the same manner as Appellants’ device (Answer 6-8). Namely, both Hayashi’s rubber plug 3 and Appellants’ high pressure sealing assembly 40 function by having their respective sealing surface deform slightly to provide a seal (Answer 6-8). The Examiner further notes that Appellants failed to define in their Specification what amount of deformation constitutes a “small amount” (Answer 8). Based on Appellants’ failure to define the term “small” the 5Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: September 9, 2013