Appeal No. 2001-0111
Application 09/077,376
Cir.), cert. denied, 469 U.S. 1037 (1984). Thus, the
recitation of the “gaps” in claim 1 is limited to the
definition set forth in the appellant’s specification.
Goralski’s passageways 40, which lie completely within the
circumferential periphery of back-up pad 10, do not meet this
definition. Moreover, there is no factual support in
Goralski, taken alone or further in view of Guidry and Robert,
for the examiner’s conclusion that changing the shape of
Goralski’s passageways 40 so as to extend them past the outer
edge of the pad, thereby transforming them into “gaps,” would
have been an obvious matter of design. The examiner’s
proposition that this modification might optimize Goralski’s
objective of removing dust generated during the abrading
process is completely conjectural.
Hence, the combined teachings of Goralski, Guidry and
Robert do not justify the examiner’s conclusion that the
differences between the subject matter recited in claim 1 and
the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art. Accordingly, we
shall not sustain the standing 35 U.S.C. § 103(a) rejection of
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