Ex parte MORIKITA - Page 10




          Appeal No. 96-2640                                                          
          Application No. 08/068,273                                                  


          and lower dies together and then compressing the preform using              
          a separate compression device (see, e.g., page 13, line 22, to              
          page 14, line 6).  It is clear from appellant’s description of              
          the prior art that in the prior art, the dies are clamped and               
          the preform is compressed by moving one die relative to the                 
          other (i.e., from the Fig. 1 position to the Fig.2 position),               
          and no separate means for clamping the dies and compressing                 
          the preform are described or suggested.  As we read page 2,                 
          lines 11 to 15 (quoted above), appellant there discloses that               
          in the prior art apparatus, the dies are moved together a                   
          certain distance to "clamp" them together, and then are moved               
          further together in order to compress the preform.  We find no              
          suggestion therein that any additional means (not shown in                  
          "prior art" Figs. 1 to 5) should be provided to compress the                
          preform, nor would we expect to, since that is what appellant               
          discloses as being at least a major aspect of his invention.                
               The examiner alternatively argues that if one were not to              
          interpret the PAT as disclosing independently operable                      
          clamping and compression means,                                             
                    then it can be considered that it would have                      
                    been obvious to one of ordinary skill in the art                  
                    at the time the invention was made to make the                    
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