Ex parte MAUER - Page 5




          Appeal No. 99-0165                                                          
          Application 08/478,070                                                      


          independent claim 16 in that                                                
                    Japan ‘735 discloses an elongated belt,                           
               comprising:                                                            
                    an elongated plastic thread member 2;                             
                    a plurality of plastic guide elements arranged                    
               sequentially along the member, with each guide                         
               element having a positioning bore (i.e. each guide                     
               element is deemed to comprise 3 and that portion of                    
               1 containing the bore but not the slot); and                           
                    a plurality of plastic component parts                            
               integrally connected to the guide elements (i.e.                       
               each component part is deemed to comprise that                         
               portion of 1 containing the slot but not the bore),                    
                    wherein the positioning bore in each of the                       
               guide elements has a fixed spatial relationship to                     
               the connected component part [answer, page 3].                         
               The appellant, on the other hand, persuasively argues                  
          that the examiner’s finding of anticipation is unsound because              
          the Japanese reference does not meet the limitations in claim               
          16 requiring the claimed belt to comprise a plurality of guide              
          elements each having at least one positioning bore and a                    
          plurality of component parts each integrally connected to one               
          of the guide elements (see pages 6 through 11 in the brief).                
          Arguably, a person of ordinary skill in the art would view                  
          each Japanese base part 3 and pinching piece 1 as constituting              
          a guide element and component part, respectively.  Such a                   
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