Ex parte STEIDINGER et al. - Page 3




                 Appeal No. 1999-0911                                                                                                                   
                 Application No. 08/852,708                                                                                                             


                 § 103(a) as unpatentable over the following combinations of                                                                            
                 prior art:2                                                                                                                            
                 (1) Claims 52 and 53, APA in view of Steidinger;                                                                                       
                 (2) Claims 54, 55, 58 and 59, APA in view of Steidinger and                                                                            
                 Otruba;                                                                                                                                
                 (3) Claims 56 and 57, APA in view of Steidinger and Klaeser.                                                                           


                 Rejection (1)                                                                                                                          
                          The argument with regard to this rejection concerns the                                                                       
                 final step of claim 52, which reads:                                                                                                   
                          providing sufficient length in said section of                                                                                
                          said web between said feed means and said cut line                                                                            
                          to reduce the tensile stress in said section of said                                                                          
                          web between said feed means and said cut line to                                                                              
                          prevent tears in said web incident to severing of                                                                             
                          said web.                                                                                                                     
                 The examiner takes the position that it would have been                                                                                
                 obvious to modify the method of the APA to include this step                                                                           
                 in view of Steidinger.  As stated by the examiner at pages 4                                                                           
                 to 5 of the Answer:                                                                                                                    



                          2A rejection of claims 52 to 59 under 35 U.S.C. § 112,                                                                        
                 first paragraph (non-enablement), has been withdrawn (removed)                                                                         
                 by the examiner (Answer, page 9).                                                                                                      
                                                                         -3-                                                                            





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