Ex parte PACZONAY - Page 5




                 Appeal No. 2001-0846                                                                                     Page 5                        
                 Application No. 08/797,960                                                                                                             


                          To support a rejection of a claim under 35 U.S.C. §                                                                           
                 102(b), it must be shown that each element of the claim is                                                                             
                 found, either expressly described or under principles of                                                                               
                 inherency, in a single prior art reference.  See Kalman v.                                                                             
                 Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789                                                                             
                 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).                                                                                  


                          In this case, we agree with the appellant's argument                                                                          
                 (substitute brief, pp. 10-22) that the claims under appeal are                                                                         
                 not anticipated by Trotter.  While Trotter does teach (page 2,                                                                         
                 left column, lines 63-68) forming a very fine slit in member 5                                                                         
                 while the member is stretched over a mandrel, Trotter does not                                                                         
                 teach applying both stretching and clamping forces.  In that                                                                           
                 regard, there is no teaching in Trotter of applying clamping                                                                           
                 forces at an interior area of the fluid flow control valve                                                                             
                 member immediately surrounding where the cut is made in the                                                                            
                 interior area during the cutting step as recited in the claims                                                                         
                 under appeal.   In the appellant's method, as shown for2                                                                                                              

                          2For example, claim 15 recites                                                                                                
                          including applying opposed clamping forces to said fluid                                                                      
                          flow control valve member in said interior area of said                                                                       
                                                                                                            (continued...)                              







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