Ex parte STEFFEN - Page 7




          Appeal No. 99-0210                                                          
          Application 08/732,285                                                      


          closure having a groove 9 (claim 15), a separate hollow                     
          chamber in the sealing pad (the unnumbered lower chamber;                   
          claims 17, 19 and 21), a separate hollow chamber in the                     
          sealing lip (the unnumbered upper chamber; claims 18, 20 and                
          21), and a foot 8 in the anchoring wedge (claim 26).                        
               The examiner has not provided us with an explanation of                
          how the subject matter recited in claims 16 and 22-25 can be                
          read upon the seal disclosed in German ‘283, and we are at a                
          loss to determine this on our own.  We therefore will not                   
          sustain the Section 102 rejection of these claims.                          
                        The Rejections Under 35 U.S.C. § 103                          
               A prima facie case of obviousness is established when the              
          teachings of the prior art itself would appear to have                      
          suggested the claimed subject matter to one of ordinary skill               
          in the art (see In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,              
          1531 (Fed. Cir. 1993)).  This is not to say, however, that the              
          claimed invention must expressly be suggested in any one or                 
          all of the references, rather, the test for obviousness is                  
          what the combined teachings of the references would have                    
          suggested to one of ordinary skill in the art (see Cable Elec.              
          Prods. v. Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881,                 

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