Appeal No. 2003-1303 5
Application No. 09/351,166
movable along the stationary framework relative to the shell of the paper machine
cylinder. Based on this express language, a person of ordinary skill would have no
trouble in understanding that the direction of movement of the feed frame called for in
these claims is with reference to the radial direction of the shell of the cylinder to be
drilled.
Judging from some of the examiner’s remarks in explaining this rejection, it
appears that the examiner’s concern is at least partially with the breadth of the claim
language appellants have employed. However, this alone is not a proper basis for
rejecting claims under § 112, second paragraph. This is so because the breadth of a
claim is not to be equated with indefiniteness. In re Miller, 441 F.2d 689, 693, 169
USPQ 597, 600 (CCPA 1971).
In light of the above, we shall not sustain the examiner’s rejection of claims 1-12
under 35 U.S.C. § 112, second paragraph.
The 35 U.S.C. § 102(b) rejection
The dispositive issue with respect to this rejection is whether Hakala discloses,
either expressly or under the principles of inherency, a drilling method that includes the
step of independent method claim 1 of
substantially eliminating influences of mechanical play due to
structures of the adjacent cylinder prior to drilling, comprising coupling at
least one support member to the adjacent cylinder to exert tangential
forces on the adjacent cylinder, whereby the mechanical play is
substantially eliminated [emphasis added,]
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