Ex Parte Solcz et al - Page 7



           1          Third, the person would know that high pressure water spray can be                       
           2    used to remove debris.                                                                         
           3          Fourth, the person would know that use of a water spray may not be                       
           4    sufficient to remove all debris.                                                               
           5          Fifth, the person also would know that a vibrating and rotating                          
           6    apparatus can be used to help remove debris.                                                   
           7          Sixth, the person would know that following water spraying, the part                     
           8    would need to be dried.                                                                        
           9          Seventh, the person would know that spinning can be used to dry the                      
          10    part.  Apart from what one learns from Noestheden, almost everyone knows                       
          11    that washing machines spin to at least pre-dry washed clothes and lettuce                      
          12    spinners are used to remove water from lettuce after it is washed.                             
          13                                                                                                   
          14          B.  Discussion                                                                           
          15          Claims 2-10 stand or fall with claim 1.  Claim 12 stands or falls with                   
          16    claim 11.  Appeal Brief, page 3.                                                               
          17          Claim 1 and claim 11 call for spinning the part at a speed and for a                     
          18    time period sufficient to eject at least a portion of the manufacturing debris                 
          19    from the part.  One skilled in the art would recognize that Sickmeier does                     
          20    exactly that.  While Sickmeier also uses vibration along with spinning,                        
          21    nothing in applicants' claims precludes the use of vibration.  The claims are                  
          22    "comprising" claims and therefore permit the use of steps not explicitly                       
          23    recited in the claims.  One skilled in the art would have known that the                       
          24    vibration and rotation described by Sickmeier removes debris.                                  
          25          In prosecution, claims are given their broadest reasonable                               
          26    interpretation consistent with the specification.  Applicants say that spinning                
          27    has to be sufficient to eject at least a portion of any debris on the part.                    

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