Appeal No. 2006-0160 Page 4
Application No. 10/029,818
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claim, to the applied prior art, and to the respective
positions articulated by the appellant and the examiner. As a consequence of our
review, we make the determinations, which follow.
We turn our attention first to the rejection under 35 U.S.C. § 112, first paragraph.
The basis of the examiner’s rejection, as set forth on page 3 of the answer, is that “[f]irst
and second adhesive deposits were never shown or disclosed.” In light of appellant’s
explanation on page 3 of the brief that the present application discloses two adhesives,
one (the one on extending adhesive strips 10, 22) deposited by the manufacturer of the
adhesive bandage and the other (adhesive 34) by the appellant in preparation of
arranging for a jewelry display using the bandage, the examiner clarified the rationale
for the rejection as follows:
Appellant did not disclose that the adhesive was applied on
the strips, nor could appellant have any control of that step,
as that is done by the adhesive bandage manufacturer. The
adhesive surface could be applied as the laterally extending
strips are formed, or the laterally extending strips could have
a basic adhesive property and not need adhesive to be
applied [answer, page 7; first supplemental answer, page 3].
The examiner’s position is not well founded. There is no requirement in 35
U.S.C. § 112 that each step recited in a method claim be controlled by appellant. We
likewise find no prohibition therein against appellant including as part of a method claim
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007