Appeal No. 95-4860
Application No. 08/044,923
during and following removal of said anchor.3
[Emphasis ours; footnote added.]
While the examiner is correct in noting that the anchor 29 of
Grunsky can be removed from the support shaft 11, we observe
that, in order to do so, Grunsky’s entire plug must be removed
from the pipeline 31, thus making it impossible for the
intermediate support 35 to maintain alignment of the support
shaft with respect to the pipeline by forming a support for
the support shaft 11 “during and following removal of said
anchor” as claimed. Therefore, we will not sustain the
rejections of claim 12 under 35 U.S.C. § 102(b) and claims 13
and 14 under 35 U.S.C. § 103.
Considering now the rejections under 35 U.S.C. § 103 of
15-19 based on the combined disclosures of O’Connor and
Streich and claims 20-22 based on the combined disclosures of
O’Connor, Streich and Leroy, both of the rejections are
bottomed on the examiner’s belief that it would have been
3This limitation sets forth a function which the claimed
apparatus must be structurally capable of performing (see,
e.g., In re Venezia, 530 F.2d 956, 959, 189 USPQ 149, 151-52
(CCPA 1976)) and such a functional statement must be given
full weight and may not be disregarded in evaluating the
patentability of the claims (see, e.g., Ex parte Bylund, 217
USPQ 492, 498 (Bd. App. 1981)).
7
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