Appeal No. 2002-1265 Page 6
Application No. 09/558,575
there is no written description support in the original disclosure for the above-noted
limitation of claim 30, then claims 30 to 32 should be rejected under
35 U.S.C. § 112, first paragraph. If the examiner determines that there is written
description support in the original disclosure for the above-noted limitation of claim 30,
then the examiner should explicitly state where that support is found in the original
disclosure.3
2. Are any of claims 30 to 32 readable on Arnold? While the examiner's reading of
claim 30 on Arnold was not appropriate as set forth above, the examiner should
determine if any of claims 30 to 32 are readable on Arnold in another manner. For
instance, are the first and second cutting portions as recited in claim 30 readable on
Arnold's conical rear portion 18 and cylindrical forward guide portion 12 (when the flutes
23-26 in guide portion 12 are cutting flutes as taught by Arnold at column 3, lines 14-
16), respectively? Likewise, are the first and second cutting portions as recited in claim
30 readable on Arnold's first end of conical rear portion 18 and second end of conical
rear portion 18 (i.e., consider Arnold's conical rear portion 18 as consisting of two
portions), respectively? If the examiner determines that any of claims 30 to 32 are
anticipated by Arnold, then those claims should be rejected under 35 U.S.C. § 102(b). If
3 In addition, the examiner should have the detailed description of Figures 9 and 10 found on
pages 8-9 of the specification amended to contain the subject matter of the above-noted limitation of claim
30 as required by 37 CFR § 1.75(d)(1).
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