Appeal 2005-2349
Application 09/961,126
reference to water in the claim. Our review of the original written
description indicates that, as determined by the Examiner, there is no
indication that the water from the water supply device combines with the
starch applied by the starch supply device to form adhesive. Rather, the
written description discloses that the adhesive is formed from a starch slurry.
This slurry contains water, but the water in the slurry is not the water applied
to the crests by the water supply device.
Appellant argues that the issue of whether starch and water form an
adhesive is immaterial to the patentability of the pending application. This
is because, according to Appellant, (1) the use of starch as an adhesive in the
art is well known; (2) the pending application does not affect the current
method of starch formulation, application, and curing; and (3) the invention
is designed to augment the starch bonding process and to replace some of the
applied starch with water alone. Appellant then points to several sections of
the written description and argues that these sections provide the required
support.
The problem is that the sections of the written description reproduced
by Appellant only support the concept of using the water within the starch
slurry to form the adhesive. That is not the “water” referenced in the claim:
The “water” of the claim must be interpreted to be the water issuing from the
water supply device as there is no antecedent basis for any other water. The
concept of using the water from the water supply device such that it
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