Ex parte NALDI - Page 3




                 Appeal No. 1999-1912                                                                                                                   
                 Application No. 08/730,724                                                                                                             


                          According to the examiner, Suzuki “substantially                                                                              
                 discloses the claimed invention” (answer, page 3).  We note,                                                                           
                 however, that Suzuki is silent as the manner in which the saw                                                                          
                 blades 14, 33 and 34 are connected to their respective drive                                                                           
                 means, which is the crux of the claimed invention.  Hence,                                                                             
                 apart from setting forth the elements of the claimed machine                                                                           
                 that appellant presumably concedes to be conventional or                                                                               
                 known , Suzuki is of little relevance to the obviousness issue3                                                                                                                             
                 at hand.  In any event, Suzuki discloses a machine for cutting                                                                         
                 boards having a first station 1 where boards 5 are                                                                                     
                 successively cut into sections by saw blade 14, and a second                                                                           
                 station 17 where the sections cut at the first station are cut                                                                         
                 into a plurality of smaller sections by the saw blades 33, 34                                                                          
                 of saws 30, 32.                                                                                                                        
                          Rudolf pertains to a device for clamping a disc-shaped                                                                        
                 tool such as a grinding disc 11.  Looking at Figure 1 of                                                                               


                 the advisory action mailed August 4, 1998 (Paper No. 11).                                                                              
                          3Note, for example, that independent claim 15 is drafted                                                                      
                 in Jepson format.  By operation of 37 CFR § 1.75(e)(1), the                                                                            
                 preamble of claims so drafted constitutes “a description of                                                                            
                 all the elements or steps of the claimed combination which are                                                                         
                 conventional or known.”                                                                                                                
                                                                           3                                                                            





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