Ex parte GRABHORN - Page 9




                 Appeal No. 1999-2446                                                                                     Page 9                        
                 Application No. 08/705,592                                                                                                             


                 because wood fragments produced by a chipper have smooth                                                                               
                 surfaces that tend to stick together and prevent the necessary                                                                         
                 flow of water through the bag.  Accordingly, we understand the                                                                         
                 claims as encompassing wood fragments having a roughness                                                                               
                 similar to that produced by a hammer-mill process and                                                                                  
                 excluding wood fragments having a surface smoothness similar                                                                           
                 to that produced by a chipping process.  Thus, we conclude                                                                             
                 that the claims under appeal do set out and circumscribe a                                                                             
                 particular area with a reasonable degree of precision and                                                                              
                 particularity as required by the second paragraph of 35 U.S.C.                                                                         
                  112.     2                                                                                                                           


                          For the reasons set forth above, the decision of the                                                                          
                 examiner to reject claims 6, 7, 9 to 17 and 19 to 25 under                                                                             
                 35 U.S.C.  112, second paragraph, is reversed.                                                                                        


                 The obviousness rejection based upon Stacy                                                                                             


                          2With regard to claim 9, we note that the term "smaller"                                                                      
                 should be "larger" for consistency with the original                                                                                   
                 disclosure and the earlier recitation in claim 9 that the wood                                                                         
                 fragments are "large enough not to pass through a separation                                                                           
                 screen."                                                                                                                               







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