Ex Parte Rode - Page 5



           Appeal No. 2006-0822                                                                       
           Application No. 10/054,253                                                                 


           in an axial direction.  According to the appellant, the alleged compressibility could      
           cause the binding rings to be plastically compressed in any number of directions           
           offset from a substantially axial direction relative to the plurality of beveled disc      
           springs.  Id.                                                                              
                 Initially, we note that the appellant has not contested the examiner’s               
           statements that metals are plastically compressible and that the metal binding rings       
           disclosed by Teeri are plastically compressible when subjected to a force that             
           exceeds their elastic limit.  Instead, the appellant appears to be arguing that there is   
           no indication in Teeri that plastic compressibility or adjustability of the binding        
           rings is desirable or that Teeri’s binding rings will always be compressed in an           
           axial direction relative to the beveled disc springs under application of any force.       
           While it is true that Teeri gives no indication that plastic compressibility or            
           adjustability is specifically desired, anticipation does not require that the reference    
           teach what the subject application teaches, but only that the claim read on                
           something disclosed in the reference, i.e., that all of the limitations in the claim be    
           found in or fully met by the reference.  Kalman v. Kimberly Clark Corp., 713 F.2d          
           760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).          
           Claim 16 does not require that the adjustable spacer plastically compress in an            
           axial direction when subjected to any and every force or under any particular              
           conditions or that it compress in a completely axial direction.  The claim merely          
           calls for the spacer to be plastically compressible in a substantially axial direction;    
           it does not specify the conditions under which such compression must occur or              
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