Ex parte JAMES ZAGUROLI, JR. - Page 5




          Appeal No. 97-0750                                                          
          Application 08/329,219                                                      



                    Looking to the examiner's rejection of claims 1, 2                
          and 6 through 8 under 35 U.S.C.  103, we must agree with                   
          appellant (brief, pages 5-7) that the examiner's combination of             
          Grassl and Richter is based on hindsight reasoning derived only             
          from appellant's disclosure and not on the fair teachings of the            
          prior                                                                       


          art references themselves.  Given the significant differences in            
          the devices and fluid systems involved in Grassl and Richter, and           
          the disparate objectives sought to be achieved by these                     
          references, we see no way that one of ordinary skill in the art             
          would have been led to their combination as proposed by the                 
          examiner   in the rejection before us on appeal.  Moreover,                 
          contrary to the examiner's factual findings, we find no                     
          disclosure in Richter of "means to adjust the compressive forces            
          in the form of clamping plates and adjustable screws" (answer,              
          page 4).  Thus, the decision of the examiner rejecting claims 1,            
          2 and 6 through 8 under 35 U.S.C.  103 relying on Grassl and               
          Richter must be reversed.                                                   


                    With regard to the examiner's rejection of claim 6                
          under 35 U.S.C.  112, first paragraph, we note that this issue             
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