Appeal 2005-2349
Application 09/961,126
combines with the starch to form an adhesive is not present in the
specification.
It appears that at the heart of the dispute here is a misunderstanding of
the claim’s scope. Appellant states in the arguments that “[t]his additional
water is not used as an adhesive, but rather as a process improvement” (Br.
7) when referring to the water issuing from the water supply device. But,
this statement supports the position of the Examiner that the water of the
water supply device is not disclosed as combining with starch to form
adhesive.
According to the dissent, “the determination of the properties of this
composition (as an adhesive) would have been conveyed by the original
disclosure to one of ordinary skill in the art.” Apparently, our dissenting
colleague believes that the formation of adhesive from the combination of
the pre-applied water, water that the Specification describes as a wetting
agent, and starch within the slurry is an inherent result of the process. The
problem is that the Specification only indicates that the pre-applied water is
a wetting agent. It is the water within the slurry that is described as
combining to form the adhesive. Moreover, as discussed above, Appellant
even states in the Brief that the pre-applied water “is not used as an
adhesive.”
Our dissenting colleague would require the Examiner to establish that
the pre-application of water followed by a starch slurry does not function to
join the two webs together or act as an adhesive. We do not agree that the
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