Ex Parte Solcz et al - Page 8



           1    Specification, page 2, line 21 through page 3, line 2.  Sickmeier vibrates and                 
           2    rotates so that debris will be removed off the part being rotated.  Applicants                 
           3    seek the same result, i.e., removal of debris, through spinning or rotation.                   
           4    Hence, the language "spinning" in claims 1 and 11 does not distinguish the                     
           5    claims from "rotation" described by Sickmeier.                                                 
           6          One skilled in the art would also know that power washing has been                       
           7    used to remove debris, but that power washing may not remove all debris.                       
           8    Therefore one skilled in the art would recognize that it would be useful at                    
           9    some point in the process to remove debris which may not necessarily be                        
          10    removed by the power washing step.                                                             
          11          What surfaces in this appeal is that applicants claim the use of known                   
          12    debris removing techniques for their intended purpose.  Specifically,                          
          13    applicants claim the use of known rotational (i.e., spinning,) and power wash                  
          14    techniques to clean manufactured parts.                                                        
          15          It is not apparent, on this record, how the claimed process results in a                 
          16    different function being achieved.  In other words, what is the practical                      
          17    advantage of the claimed process vis-à-vis the process described by                            
          18    Noestheden?  The Noestheden process is said to remove debris.  Applicants,                     
          19    which include Noestheden, now tell us in the specification that Noestheden                     
          20    is not necessarily efficient in removing debris (at least "in some cases", none                
          21    of which are identified).  What that means, of course, is that additional steps                
          22    must be taken by those skilled in the art using the Noestheden process when                    
          23    the Noestheden process "in some cases" does not remove all debris.  Another                    
          24    debris removing step is a manifest solution.  Sickmeier provides a known                       
          25    additional method for removing debris.  One skilled in the art manifestly                      
          26    would know that both debris removing steps could be combined to more                           
          27    efficiently remove debris "in … [those] cases" where power washing itself                      

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