Ex parte SIMMONS - Page 19




          Appeal No. 1997-0595                                      Page 19           
          Application No. 08/154,911                                                  




               For the reasons set forth above, the decision of the                   
          examiner to reject claims 1 to 6, 10 and 12-17 under 35 U.S.C.              
          § 103 as being unpatentable over Ottaviano '776 in view of                  
          Engel is affirmed.                                                          


          Claims 7 and 8                                                              
               We will not sustain the rejection of claims 7 and 8 under              
          35 U.S.C. § 103 as being unpatentable over Ottaviano '776 in                
          view of Johnson and Engel.                                                  


               Claims 7 and 8 add to their respective parent claim the                
          limitation that the "pad-transferring assembly" further                     
          comprises "a guide unit."  Each of claims 7 and 8 sets forth                
          details of the guide unit.  In this rejection (answer, p. 5),               
          the examiner relies upon Johnson's receptacle 150 as being                  
          suggestive of the claimed guide unit.  We do not agree.  In                 
          our view, the only suggestion for modifying Ottaviano '776 in               
          the manner proposed by the examiner to meet the above-noted                 
          limitations stems from hindsight knowledge derived from the                 
          appellant's own disclosure.  It follows that the decision of                







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