Ex Parte MCNEIL - Page 5



          Appeal No. 1999-0233                                                        
          Application No. 08/787,893                                                  

          which is indicated to be cut with high accuracy (column 6, lines            
          1 and 2), is stacked one upon the other in the piling section 48            
          (Fig. 1).  Since a core wound paper product, as now claimed,                
          would not have been suggested by the Matsumoto patent, the                  
          rejection cannot be sustained.                                              

                               REMAND TO THE EXAMINER                                 

               We remand this application to the examiner to fully consider           
          each of the following matters.                                              

          1.  The underlying disclosure should be assessed to determine if            
          descriptive support (literal or implicit) exists for the process            
          limitation in claim 2 reciting indicia and lines of termination             
          being “simultaneously impartable”, as required by 35 U.S.C.                 
          § 112, first paragraph.                                                     

          2. The preamble portion (a “sheet”) of each of claims 3 through             
          8, line 1, is inconsistent with parent claim 2, line 1, setting             
          forth a “core wound paper product.”                                         



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