Appeal No. 96-1633
Application 08/119,245
Claims 1, 3-11 and 14 stand rejected under 35 U.S.C. §
103 as being unpatentable over Wohl in view of Zahn as applied
in the rejection of claim 13 et al., and further in view of
Bouchey.
Considering first the rejection of independent method
claim 13, the examiner finds that Wohl “discloses the seal
essentially as claimed,” and that Zahn “discloses a similar
seal having a sealing composition 30 which is pre-applied to
the resilient member” (answer, page 3). In rejecting claim
13, the examiner concedes that Wohl does not disclose that the
sealing composition 70 is pre-applied to Wohl’s resilient
member A. Nevertheless, the examiner concludes that it would
have been obvious to one of ordinary skill in the art to
modify Wohl by pre-applying the sealing composition 70 to the
resilient member A, “thereby providing an alternative method
of making of the seal and providing a seal that is easy to
install” (answer, pages 3-4). Although not specifically
stated, it appears to be the examiner’s position that the
gasket arrangement of Wohl modified in the above manner would
result in the practice of the claimed method because the steps
of method claim 13 would necessarily result from providing
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