Ex parte KENDRICK - Page 8




                 Appeal No. 1999-2064                                                                                     Page 8                        
                 Application No. 08/619,853                                                                                                             


                          We sustain the rejection of claims 29, 37 and 39 under                                                                        
                 35 U.S.C.  103, but not the rejection of claims 30 to 36, 38                                                                          
                 and 40 to 48.                                                                                                                          


                 Claims 30 and 40 to 45                                                                                                                 
                          We agree with the appellant's argument (brief, pp. 7-10)                                                                      
                 that the claimed linear bands positioned as set forth in                                                                               
                 independent claim 30 would not have been obvious at the time                                                                           
                 the invention was made to a person having ordinary skill in                                                                            
                 the art from the subject matter of Mowry's claim 12.  In that                                                                          
                 regard, we note that Mowry's claim 12 fails to teach each band                                                                         
                 having "first and second substantially parallel substantially                                                                          
                 linear edges" and each of the bands engaging others of the                                                                             

                          3(...continued)                                                                                                               
                  102(g).  We note that in parent Application No. 07/817,894                                                                           
                 the appellant did not copy claim 12 of Mowry for purposes of                                                                           
                 interference as suggested by the examiner.  On these facts,                                                                            
                 the appellant's refusal to make the suggested claim                                                                                    
                 constitutes a concession that the subject matter of that claim                                                                         
                 is prior art as to the appellant within the meaning of 35                                                                              
                 U.S.C.  102(g) and 35 U.S.C.  103.  Otherwise stated, the                                                                            
                 appellant's refusal to make the suggested claim constitutes a                                                                          
                 disclaimer of the invention covered by that claim and the                                                                              
                 appellant is not entitled to claims which do not define                                                                                
                 patentably over claim 12 of Mowry.  See In re Ogiue, 517 F.2d                                                                          
                 1382, 1391, 186 USPQ 227, 235 (CCPA 1975) and                                                                                          
                 37 CFR  1.605(a).                                                                                                                     







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