Ex parte ERIKSSON et al. - Page 7




          Appeal No. 1998-1266                                     Page 7             
          Application No. 08/354,459                                                  


         the initial hole in appellants’ method.  Reference is made to                
         column 1, lines 21-23, and the paragraph bridging columns 6                  
         and 7 of the DeFries specification.                                          


              As the axial movement of DeFries’ tool continues, the                   
         frustoconical portion engages and grinds the periphery of the                
         drilled hole to enlarge the hole and to completely eliminate                 
         the delamination damage produced by forming the initial hole                 
         as disclosed in column 7, lines 4-9, of DeFries’ specification               
         and shown in Figure 4 of DeFries’ patent drawings.  Appellants               
         have not contested any of the foregoing findings.  The                       
         recitation in claim 5 of moving the cutting tool relative to                 
         the edge of the formed hole is broad enough to read on the                   
         axial movement of DeFries’ combination tool as described                     
         supra.  Accordingly, the claimed tool-moving step does not                   
         distinguish from DeFries, making it unnecessary to rely on                   
         Hirabayashi for a suggestion of this feature.  In any case,                  
         Hirabayashi suggests the concept of widening an initial hole                 
         in a sheet material by moving a cutting tool relative to the                 
         edge of the hole for the purpose of eliminating damage                       









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