Appeal No. 1998-2482
Application No. 08/533,429
column 5, lines 17-19], the legs of the Hadley gasket would be impeded from deflecting
away from each other. Accordingly, we will not sustain the rejection of claims 3-5,
11-13, 18 and 20-22 under 35 U.S.C. § 103.
With regard to claims 8 and 16, these claims stand rejected under 35 U.S.C.
§ 103, with the examiner relying on a teaching by Bogner of applying an adhesive to a
gasket. Appellant does not argue the unobviousness of applying an adhesive to a gasket
but relies on the arguments relative to Hadley and the fact that Bogner does not remedy the
deficiency of Hadley. While we, too, do not doubt the obviousness of applying an adhesive
to a gasket, claim 8 includes limitations of claims 1, 2 and 6 while claim 16 includes
limitations of claims 9 and 14. Since there is no evidence provided by Hadley and/or
Bogner of the obviousness of limiting the deflection of the leg members or of retaining the
gasket in a predetermined position on one of the substrates during assembly of the
substrates, we will not sustain the rejection of claims 8 and 16 under 35 U.S.C. § 103.
We also note that the examiner states, at the bottom of page 5 of the answer, that
the “limitation of the leg members deflecting away from each other has not been
considered due to the new matter rejection.” As noted supra, with regard to the rejection
under 35 U.S.C. § 112, first paragraph, we do not view the limitation of the leg
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