Appeal No. 2006-0020 Παγε 4
Application No. 09/984,009
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims2, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. For the reasons
which follow, we cannot sustain the examiner’s rejections.
Each of appellants’ independent claims 13 and 28 recites the limitation “each of
said shim sections having a maximum transverse width that is smaller than said
maximum predetermined width of said fastener opening as measured in a direction
parallel to said predetermined minimum width of said open end of said fastener
opening.” None of the references relied upon by the examiner in rejecting the claims on
appeal teaches or suggests a shim having such a dimensional relationship.
2 Upon return of this application to the Technology Center, the examiner should consider whether
the subject matter of claims 16, 17,19, 31, 32 and 34 has written description support, as required under
the first paragraph of 35 U.S.C. § 112, in the application as originally filed. Specifically, independent
claims 13 and 28, and hence all of the claims depending therefrom, are directed to the second shim
embodiment (Figures 11 and 12) and not to the first embodiment (Figures 8 and 9). The features of
dependent claims 16, 17,19, 31, 32 and 34 relate to the third shim embodiment (Figures 13 and 14), which
is described as being identical to the first embodiment except that the shim includes a handle portion
including indicia that acts as an indicator of the thickness of the shim (specification, page 14). There does
not appear to be any indication in the original disclosure that the indicator features of the third embodiment
are to be employed with a shim according to the second embodiment.
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