Ex parte MACLEOD et al. - Page 10




               Appeal No. 98-0816                                                                                                  
               Application 08/286,287                                                                                              

               rejection of claims 13 and 14, however, this reference was only relied upon for its general teaching of a           

               partially compressed elastic washer and adds nothing to the base references. We also note that the                  

               examiner additionally relied upon Kloeppel in the rejection of claim 15, however, this reference was                

               only relied upon for its general teaching of a foam washer and adds nothing to the base references.                 

               Claims 13 to 17 depend from independent claim 12 and include the same salient feature as to the                     

               adhesiveless attachment of a shield in a spindle motor assembly.  Therefore, claims 13 to 17 fall with              

               our consideration of claim 12 for the same reasons given above.  Accordingly, we will reverse the                   

               rejections of claims 12 to 17 under 35 U.S.C.  103.                                                                

               Rejection of Claim 35 Under 35 U.S.C.  103:                                                                        

                       We turn next to the question of the obviousness of claim 35 under  103.  We note at the                    

               outset that appellants admit (Brief, page 10) that independent claim 35 has been copied verbatim from               

               Connors (see claim 1 of Connors).  According to appellants, claim 35 was not copied for purposes of                 

               interference (and we note that no interference proceedings have been established by the examiner), and              

               claim 35 is alleged to be patentably distinct from Conners under In re Donaldson, 16 F.3d 1189, 29                  

               USPQ2d 1845 (Fed. Cir. 1994), since the disclosed structure corresponding to the "means for                         

               attaching . . ." clause differs as between Connors and appellants’ claim 35 on appeal.  Although                    

               appellants’ claim 35 and Connors’ claim 1 are identical in wording, we find that their meanings differ              

               due to the patentably distinct structures found in their disclosures supporting the "means for attaching . .        

               . " clause.  In Connors, the "means for attaching . . ." consists of screws or adhesive to perform the              

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