Appeal No. 2004-1194 Page 5
Application No. 09/580,880
In the rejection of claims 16 and 23, the examiner (answer, p. 3) determined that
both claims 16 and 23 were readable on either Bobkowicz's rotatable grooved
consolidating roll 25 or Bobkowicz's rotatable grooved consolidating roll 45. The
appellants argue throughout both briefs that Bobkowicz's rotatable grooved
consolidating roll 25 and Bobkowicz's rotatable grooved consolidating roll 45 lack the
following: (1) a roller "adapted to rotate a thin disk" as recited in claims 16 and 23; (2) a
groove having at least two surfaces "adapted to contact an edge of the thin disk" as
recited in claims 16 and 23; (3) a plurality of holes formed in at least one of the two
surfaces, the holes being "adapted to reduce a probability of trapping fluid between the
thin disk and the roller" as recited in claim 16; and (4) a plurality of holes formed in at
least one of the two surfaces, the holes being "adapted to reduce slippage of the thin
disk relative to the roller" as recited in claim 23.
In our view, Bobkowicz's rotatable grooved consolidating roll 45 lacks a plurality
of holes formed in at least one of the two surfaces of the groove. While Bobkowicz
clearly teaches that rotatable grooved consolidating roll 45 has a V-groove 46 which
defines two faces/surfaces, the channel 47 is formed over and above each face of the
V-groove 46. As such, Bobkowicz's rotatable grooved consolidating roll 45 lacks a
plurality of holes formed in at least one of the faces of the V-groove. Accordingly,
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