Ex parte WEST - Page 8




          Appeal No. 1999-1785                                                        
          Application No. 08/512,656                                                  

          the recess or “seat” which receives seals 104.  Therefore,                  
          because Totten shows a “seat” as broadly claimed and discloses              
          each and every element of claim 11, we will thus sustain the                
          examiner’s rejection of this claim under 35 U.S.C. § 102(b).                


               In looking at the examiner’s rejection of Claim 12 on                  
          appeal under 35 U.S.C. § 102(b) as being clearly anticipated                
          by Totten, we see that dependent claim 12 expressly requires                
          that the external member define at least one groove for                     
          receiving the seal member.  The appellant’s argument that                   
          “[n]o such groove between an external member and an internal                
          member appears in Totten” (brief, page 7) is not understood                 
          and would seem to be directly in conflict with appellant’s                  
          argument (brief, page 6) regarding Totten and its use against               
          independent claim 11 on appeal.  As we stated above, Totten                 
          clearly shows grooves 166, 168 in external member 92 for                    
          receiving seal member 104.  Thus, we will sustain the                       
          examiner’s rejection of claim 12 under 35 U.S.C. § 102(b) as                
          being clearly anticipated by Totten.                                        


               We turn to the rejection based on Totten under 35 U.S.C.               

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