Appeal No. 2004-1159
Application 10/108,315
In responding to the examiner’s rejection of independent
claim 11 under 35 U.S.C. § 102(b) based on Monahan, appellant
contends that Monahan discloses only a holder or rack (R) for a
conventional paper towel roll (T), and fails to provide any
disclosure or teaching of a “package for retail sale” as set
forth in claim 11 on appeal. The examiner expresses the view
(answer, page 6) that the language “for retail sale” is merely
intended use and that Monahan clearly teaches a “package” since
the rack and paper towel roll have been combined into a single
unit, which the examiner apparently views as being accepted or
rejected as a single unit. We do not agree. Like appellant, it
is our opinion that one of ordinary skill in the art would not
reasonably view the rack and roll of paper toweling associated
therewith as shown in Figure 1 of Monahan as being a “package for
retail sale.” In that regard, we generally share appellant’s
views as expressed in the brief (pages 3-4) and reply brief
(pages 1-3).
Before the USPTO, when evaluating claim language during
examination of a patent application, the examiner is required to
give the terminology of the claims its broadest reasonable
interpretation consistent with the specification, and to remember
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