Ex Parte Addie et al - Page 5



            Appeal 2007-1722                                                                               
            Application 10/212,919                                                                         

                         of the lip 50 and the complimentary rounded geometry of                           
                         the relief in the impeller front shroud (unnumbered, see                          
                         col. 1, lines 71-75), and the 45° inclination of the lip 50.                      
                         (Answer 8).                                                                       
                  5.  The Examiner found that “the follower plate 34 of Studebaker et al. is               
            mechanically no different than the claimed suction liner 4.  Both elements bound a             
            slurry flow path.” (Answer 8).                                                                 
                  6.  The Examiner found that “[a]t the time the invention was made, it would              
            have been an obvious matter of design choice to a person of ordinary skill in the art          
            to have a rounded protrusion tip and rounded relief because Applicant has not                  
            disclosed that a rounded protrusion tip and rounded relief provide an advantage,               
            are used for a particular purpose, or solve a stated problem.”  (Final Rejection 5).           
                  7.  Studebaker discloses that the protrusion formed by the annular lip 50:               
                         …serves to direct the flow of slurry into the runner eye in                       
                         such a manner that it reduces secondary circulation of                            
                         slurry between the runner and the follower plate to a                             
                         minimum. (Studebaker col. 2, ll. 14-21.)                                          
                  8.  It is our understanding that the secondary flow in Studebaker, discussed             
            supra (FF 7), would also include particulates suspended in the disclosed slurry                
            which would move with the slurry as part of the secondary flow.  However, any                  
            such secondary flow in Studebaker is reduced by the protrusion 50 as found supra               
            (FF 7), as does Appellants’ protrusion 2 reduce flow through the nose gap because              
            both protrusions are disposed perpendicularly to the radial path, which is the                 
            direction the secondary flow would otherwise take through the space between the                

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