Ex parte MALIK et al. - Page 5




                 Appeal No. 97-0677                                                                                                                     
                 Application No. 08/312,710                                                                                                             




                          On pages 5-6 of the brief, the appellants argue that                                                                          
                                   the outer surface of the body portion of Pyzytulla's                                                                 
                                   drum is not positioned in a tangential plane in close                                                                
                                   proximity to a tangential plane along the outer                                                                      
                                   surface of the handling ring. . . . [and that]                                                                       
                                   one skilled in the art considering the teachings of                                                                  
                                   Ames '847 in combination with Pyzytulla                                          '642 . . .                          
                                   would not decrease the energy absorbing capability of                                                                
                                   Pyzytulla's "crumple zone" by moving the transition                                                                  
                                   ring radially inwardly.                                                                                              

                 Thus, the appellants argue that the limitation that the "body                                                                          
                 portion outside  surface is positioned in a tangential plane in2                                                                                                           
                 close proximity to a tangential plane along said handling ring                                                                         
                 outer surface" is not taught by Pyzytulla and that the combined                                                                        
                 teachings of Pyzytulla and Ames would not have suggested this                                                                          
                 limitation.                                                                                                                            


                          It is an essential prerequisite that the claimed subject                                                                      
                 matter be fully understood.  Analysis of whether a claim is                                                                            
                 patentable over the prior art under 35 U.S.C.  103 begins with                                                                        

                          2We read the terminology "outside surface" as referring                                                                       
                 back to the previously recited "outer cylindrical surface" of                                                                          
                 the body portion.  Accordingly, we suggest that claim 1, as                                                                            
                 well as claim 4 which contains the same language, be amended                                                                           
                 to change "outside" to --outer-- for better antecedent basis.                                                                          
                                                                           5                                                                            





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