Ex parte VOLLENWEIDER - Page 7




               Appeal No. 1998-2179                                                                          Page 7                 
               Application No. 08/433,231                                                                                           


               taken, in light of Newsome's teaching that running shingles are a convenient way of                                  
               transporting signatures into processing devices such as stackers (an alternative form of storage),                   
               etc.  As disclosed by Newsome, the output of a printing press is often stored for subsequent                         
               processing for various reasons.  In these cases, the output of the signature-forming machine is                      
               converted into stacks for storage and the stacks are later fed into a processing device of one                       
               kind or another (column 1, lines 37-49).  This discussion of Newsome explains to our                                 
               satisfaction why one of ordinary skill in the art would have been motivated to convert the                           
               signatures to stacks for temporary storage before feeding them to a winding apparatus of the                         
               type taught by Reist to form a package.                                                                              
                       The appellant's brief (page 8) also states that claim 12 "expressly recites that the blanks                  
               are fed one after the other which, as illustrated and described in the [appellant's] specification,                  
               means not overlapping," which we interpret as an argument that Newsome, even if modified as                          
               proposed by the examiner, would not meet the limitation "first conveying means for feeding the                       
               blanks individually one after the other" in independent claim 12.  For the reasons which follow,                     
               we do not find this argument persuasive with regard to apparatus claims 12, 19 and 20.                               
                       In proceedings before it, the PTO applies to the verbiage of claims the broadest                             
               reasonable meaning of the words in their ordinary usage as they would be understood by one                           
               of ordinary skill in the art, taking into account whatever enlightenment by way of  definitions                      











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