Appeal No. 96-0706
Application 08/185,756
of 35 U.S.C. § 112, first paragraph. Claims 16, 17, 18, 20, 21
and 22, the only other claims pending in this application, have
been allowed. We reverse.
The claimed invention pertains to an unbalanced aluminum
drive shaft having a balance weight of density greater than that
of aluminum secured thereto. We will not further elaborate upon
the claimed invention inasmuch as this is the second appeal
involving precisely the same claims and rejection. In Appeal
Number 93-4353, decided November 24, 1993, in parent application
No. 07/643,170, a merits panel of this board affirmed the
examiner’s rejection of identical claims 23 through 40 under 35
U.S.C. § 112, first paragraph. In that decision, the panel
several times noted that there was “no persuasive evidence of
record which would support . . . [the appellants’] position
[concerning knowledge possessed by the skilled worker] and
counsel’s argument in the brief cannot take the place of such
evidence” (decision, pp. 5 and 7). Familiarity with that earlier
appeal and decision is presumed.
In the present continuation application, the appellants have
accepted the earlier panel’s implicit invitation to provide
evidence to support the appellants’ position. In particular, the
appellants have come forward with declarations by (1) Donald A.
2
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