Appeal No. 1996-3525 Page 11
Application No. 08/089,595
For the reasons stated above, the decision of the
examiner to reject claims 10 and 11 under 35 U.S.C. § 103 is
affirmed.
Claims 1 through 3 and 7
With respect to claims 1 through 3 and 7, the appellants
argue (brief, pp. 9-11 and reply brief, pp. 3-4) that the
combined teachings of the applied prior art would not have
suggested the "means disposed about and slidably engaged with
said element for selectively positioning and maintaining said
element intermediate axially spaced first and second points"
of claim 1. Specifically, the appellants argue that the
structure of Morris '163 corresponding to this means is not
equivalent to the structure disclosed by the appellants (i.e.,
resilient elastomeric frustoconical cone 108 shown in Figure
7). We agree.
As explained in In re Donaldson, 16 F.3d 1189, 1193, 29
USPQ2d 1845, 1848-49 (Fed. Cir. 1994), the PTO is not exempt
from following the statutory mandate of 35 U.S.C. § 112,
paragraph 6, which reads:
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