Appeal 2005-2349
Application 09/961,126
JEFFREY T. SMITH, Administrative Patent Judge, concurring-in-part and
dissenting-in-part:
I concur with the panel's decision to affirm the Examiner's § 103
rejection of claim 35 for the reasons expressed in the majority opinion.
However, I respectfully dissent from the majority's decision to affirm the 35
U.S.C. § 112, first paragraph rejection and the rejection of claims 10, 11, 16,
and 17 under 35 U.S.C. §§ 102(b) and 103(a).
Turning to the rejection under 35 U.S.C. § 112, first paragraph, I share
the Appellant's position that the subject matter of the appealed claims
complies with the written description requirement of the first paragraph of
35 U.S.C. § 112. With regard to written description support, all that is
required is that Appellant's Specification reasonably conveys to one of
ordinary skill in the art as of the filing date of the application that Appellant
was in possession of the presently claimed invention; how the Specification
accomplishes this is not material. See In re Kaslow, 707 F.2d 1366, 1375,
217 USPQ 1089, 1096 (Fed. Cir. 1983); In re Edwards, 586 F.2d 1349,
1351-52, 196 USPQ 465, 467 (CCPA 1978).
The Examiner urges the Specification does not provide descriptive
support for the claim recitation "the water and starch combine to form an
adhesive joining the first and second webs of medium together." (Answer
4).
The Examiner's position is not persuasive. As correctly noted by
Appellant, the Specification at page 10 describes the application of a wetting
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