1 Applicants further maintain at page 6 of the Appeal Brief that there is
2 absolutely no teaching in either Noestheden or Sickmeier of merely spinning
3 a part in between sequential manufacturing operations in order to remove
4 debris from the part and power washing only following a final
5 manufacturing step. Applicants do not, and cannot, claim to have invented a
6 process where sequential manufacturing operations are used to make an
7 engine part. Based on the prior art before us (i.e., what applicants tell us in
8 the specification and the prior art cited by the Primary Examiner), it is
9 abundantly clear that one skilled in the art knows of techniques to eliminate
10 debris and knows that they can be used where necessary. Nothing in this
11 record suggests that those skilled in the art would not use one or more of the
12 known techniques between manufacturing steps and Noestheden suggests
13 that they would. In doing what applicants claim to be doing, no new
14 function is performed and no new benefit is achieved. What applicants
15 would have us believe their process achieves is the very thing the prior art
16 tells us will be achieved: an engine part free of debris. Claims 1 and 11 for
17 a combination of steps which only unite old steps with no change in their
18 respective functions, if granted in a patent, would withdraw what already is
19 known into the field of its monopoly and diminish the resources available to
20 those skilled in the art. Section 103, as interpreted by the Supreme Court,
21 tells us that applicant is not entitled to a patent containing claims 1-12.
22 Sakraida v. AG Pro, Inc., 425 U.S. 273, 281 (1976); Great Atlantic &
23 Pacific Tea Co. v. Supermarket Equipment Co., 340 U.S. 147, 152-153
24 (1950). Consistent with Graham v. John Deere Co., 383 U.S. 1, 6, 18
25 (1966), the Primary Examiner has given proper effect to the constitutional
26 standard by an appropriate application of the statutory scheme as enacted by
10
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