Ex Parte SUMIDA et al - Page 3




            Appeal No. 2002-0607                                                                       
            Application No. 09/258,138                                                                 


                  (2) claim 2, unpatentable over Sumida in view of Dietrich,                           
            and further in view of Stumpp;                                                             
                  (3) claim 3, unpatentable over Sumida in view of Dietrich,                           
            and further in view of Belshaw;                                                            
                  (4) claim 4, unpatentable over Sumida in view of Dietrich,                           
            and further in view of Itoh; and                                                           
                  (5) claim 5, unpatentable over Sumida in view of Dietrich,                           
            and further in view of Berton.                                                             
                                             Discussion                                                
                  A review of the prosecution history of the present                                   
            application reveals the following:                                                         
                  !     In the first office action (Paper No. 5), claim 1                              
                        was rejected by the examiner under 35 U.S.C.                                   
                        § 102(b) as being anticipated by Sumida.  In                                   
                        support of this position, the examiner stated                                  
                        (page 2) that Sumida teaches “a compression                                    
                        between the two [unspecified] housing parts and an                             
                        [unspecified] elastic ring is used to create                                   
                        further compression.”                                                          
                  !     In the final rejection (Paper No. 7), claim 1                                  
                        (amended) was rejected by the examiner under 35                                
                        U.S.C. § 103(a) as being unpatentable over Sumida                              
                        in view of Dietrich.  The examiner stated (page 2)                             
                        that Sumida “applies as per the last office                                    
                        action,” and that Dietrich “teaches a housing part                             
                        and a valve body within the housing part with the                              
                        valve body having two diameters and a seal located                             
                        at the shoulder between the diameters and between                              



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