Ex Parte Schmidt - Page 16



                Appeal 2005-2349                                                                             
                Application 09/961,126                                                                       

                agent such as water to the crests on the first side of the web followed by the               
                application of a starch slurry to the crests wherein the wetting agent has                   
                previously been applied.2  The disclosure on page 10 of the Specification                    
                further describes the application of a second web which is secured to the                    
                plurality of crests wherein the wetting agent and starch slurry have                         
                previously been applied.  The Appellant's description in the claim that the                  
                water and starch combine to form an adhesive that joins the web medium                       
                together does not deviate from the disclosure in the Specification.  The                     
                Examiner has not established that the pre-application of water followed by a                 
                slurry solution does not function to secure the subsequently added second                    
                web to the crests of the first web.  In other words, the Examiner has not                    
                established that the application of water to the crest followed by a slurry                  
                solution does not function to join the two webs together or act as an                        
                adhesive.  While it is recognized that the Specification does not describe all               
                possible properties achieved by composition wherein water is applied as a                    
                wetting agent prior to the addition of a starch slurry, 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.  Consequently, I             
                would reverse the Examiner's rejection under 35 U.S.C. § 112, first                          
                paragraph.                                                                                   

                                                                                                            
                2 The Specification, page 1, indicates that the starch slurry is prepared by                 
                using mainly powdered starch and water.  Thus, the starch slurry is a water                  
                soluble composition.                                                                         
                                                    -16-                                                     




Page:  Previous  6  7  8  9  10  11  12  13  14  15  16  17  18  19  20  Next 

Last modified: November 3, 2007