Ex parte MACLEOD et al. - Page 13

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

               We turn next to the question of the obviousness of claim 36 under  103.  We note at the                            

               outset that appellants admit (Brief, page 26) that independent claim 36 has been copied verbatim from               

               Jabbari (see claim 1 of Jabbari).  According to appellants, claim 36 was not copied for purposes of                 

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

               claim 36 is alleged to be patentably distinct from Jabbari under In re Donaldson, 16 F.3d 1189, 29                  

               USPQ2D 1845 (Fed. Cir. 1994), since the disclosed structure corresponding to the "means for                         

               mounting . . ." clause differs as between Jabbari and appellants’ claim 36 on appeal.  Although                     

               appellants’ claim 36 and Jabbari’s 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 mounting . .         

               . " clause.  In Jabbari, the "means for mounting said stator to said stationary shaft and for supporting            

               said stator in a generally fixed position relative to said hub" consists of support 70 which has an                 

               unspecified attachment to the stator, whereas appellants’ disclosure employs a clamp spring, a headed               

               fastener, and an offset flange surfacer for performing the recited function.  The combination of these              

               three elements as taught by appellants achieves the important function of mounting the stator to the hub            

               in order to hold it in place without the use of adhesives by compressing the stator in an axial direction.          

               The main issue before us then, is whether or not appellants’ claim 36 would have been obvious over                  

               Jabbari in view of the applied secondary references to Tanaka and Starcevic.                                        

                       The examiner rejects claim 36 (see Answer, pages 4 to 8) over Jabbari (as teaching a disc                   

               drive having a stator mounted on a support in an undefined fashion) in view of Tanaka (as teaching a                


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