Ex parte DAVID E. WELSH et al. - Page 7




          Appeal No. 96-0706                                                          
          Application 08/185,756                                                      


               fact that a non-welded connection is provided between                  
               the aluminum drive shaft and the steel body of the                     
               balance weight.  If a direct welded connection were                    
               provided, there would be no need for the "cap" to                      
               retain the body of the balance weight on the drive                     
               shaft.  Again, in my opinion, such a situation would                   
               run contrary to the plain import of the specification.                 
                    13. At Page 4, Lines 33-34, it is stated that                     
               “[t]he molten aluminum 18 adheres readily to the outer                 
               surface of the aluminum drive shaft 10.”  Noticeably                   
               absent from this sentence is any suggestion that the                   
               molten aluminum adheres (readily or otherwise) to the                  
               body of the balance weight.  At a minimum, this                        
               language indicates to me that the molten aluminum does                 
               not weld to the body.  When read in context and with                   
               the knowledge of the relative metallurgical properties                 
               of aluminum and "higher density" materials which would                 
               be well known to any person of ordinary skill in this                  
               art, it is clear to me that the specification is                       
               describing a structure wherein the balance weight is                   
               not welded to the drive shaft.                                         
                    14. At Page 4, Line 34 to Page 5, Line 1, it is                   
               stated that “[i]n this manner, a secure spot or rivet-                 
               type weld is formed which will maintain the balance                    
               weight 12 against the drive shaft 10".  Again, the                     
               obvious and unambiguous conclusion which a person                      
               having ordinary skill would draw from this language                    
               (and the preceding language) is that the aluminum                      
               welding material is spot welded (i.e., "adheres                        
               readily") to the outer surface of the aluminum drive                   
               shaft and is formed with a cap to mechanically retain                  
               the body of the balance weight against the drive shaft,                
               like a rivet.                                                          
                    15. The only language of Claim 29 which is not                    
               expressly described in the specification of the                        
               application as originally filed is that the cap                        
               provides the sole means for retaining the balance                      
               weight upon the drive shaft.  Similarly, the only                      
               language of Claim 35 which is not expressly described                  
               in the specification of the application as originally                  

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