Ex Parte Rhoades - Page 12

                 Appeal 2007-0796                                                                                      
                 Application 10/236,088                                                                                
                        The issue raised by Appellant is whether the cylindrical wall portion                          
                 of Genuise's spool 34 "forms a chamber of dimensions suitable to hold                                 
                 pills," as called for in claim 21 (Reply Br. 9).  Specifically, Appellant argues                      
                 that a wall alone which is part of a rotating spool 34 having no bottom wall                          
                 such that it may be positioned around a cylindrical member 30 does not                                
                 necessarily form a chamber of dimensions suitable to hold pills.  Id.  This                           
                 argument is not commensurate with the scope of claim 21, which does not                               
                 require that the wall actually form a chamber capable, by itself, of holding                          
                 pills.  A person of ordinary skill in the art would understand that a                                 
                 cylindrical wall, by itself, as recited in claim 21, is not capable of holding                        
                 pills or other objects without cooperation with other unrecited structure, and                        
                 would read claim 21 as requiring that the cylindrical wall have dimensions                            
                 sufficient to accommodate pills, in a chamber defined in part thereby.  We                            
                 find that the dimensions of the inner chamber defined by the cylindrical wall                         
                 of spool 34 of Genuise are sufficient to hold at least pills of very small size2,                     
                 which is all that claim 21 requires.  While Genuise does not explicitly                               
                 indicate that the drawings are drawn to scale or specify exact dimensions,                            
                 any notion that a workable retraction member 12 would have spool 34                                   
                 dimensions so small as to be incapable of accommodating pills of even the                             
                 smallest known pill size within the cylindrical wall portion thereof is                               
                 untenable.  The rejection is sustained as to claim 21.                                                
                 Claim 22:                                                                                             
                        Appellant argues that Genuise fails to teach a means for biasing the                           
                 elongated member to automatically retract into the annular housing after the                          
                 elongated member has been extracted (App. Br. 19).  This argument is not                              
                                                                                                                      
                 2 Claim 21 does not define any minimum pill size.                                                     

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