Appeal No. 1997-3980
Application 08/253,887
with the threaded shaft 95 has a smaller diameter than the central aperture 101 of the disk
itself.
Therefore, we are persuaded by the appellant's position that the two clauses taken
as a whole are not met by the teachings in Noguchi. The claim requires that the disks be in
“held” position, which feature is not met by the examiner's reasoning since the shaft would
permit what we surmise is a substantial lateral movement of the disk even when the shaft
protrudes through it. The functional requirement of the actual language of the claim is much
more restrictive than merely “keeping” the disks positioned within the magazine as
asserted by the examiner. Keeping the disks in “held” positions requires necessarily that
the diameter of the shaft be much larger than would be allowed according to the teachings
and showings in Noguchi. Note by careful study, the size relationships of the Noguchi shaft
95 in Figures 1b, 2a, 3b and 10a-d. Therefore, we reverse the rejection of claim 13 under
35 U.S.C. § 102.
We also reverse the rejection of claims 1, 8 and 15 under 35 U.S.C. § 103.
The examiner's position at page 4 of the answer indicates that Noguchi does not teach the
claimed second shaft extending into a magazine. As we see it, the issue is more complex
than merely duplicating, that is, providing another shaft in addition to the
shaft 95 shown in representative Figures 10a-e of Noguchi. We do not agree initially with
the examiner's motivation rationale that it would have been obvious for the artisan to have
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