Appeal No. 2006-1281 Page 5
Application No. 09/926,029
USPQ2d 1111, 1116-17 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366, 1375, 217
USPQ 1089, 1096 (Fed. Cir. 1983). In this case, appellant’s specification indicates, on
page 12, that the packaging paper roll 19 is constituted of a hollow tubular shaft
member 21 “of a boxboard (a hard synthetic resin may be used)” and does not indicate
that the shaft member material lacks homogeneity in any portion thereof. In the
absence of any such disclosure in appellant’s specification or drawings, one of ordinary
skill in the art would have immediately envisaged a homogeneous shaft member
material and, hence, increased flexibility, at least to some degree, in the notched or
engaged portions 21A as compared to the portions between such engaged portions.
We find nothing in the appellant’s description (specification, pages 22-23) of the Figure
8 embodiment, wherein the outer portion of the lower edge of the shaft is uncut, as
preventing or inhibiting collapse of the lower edge of the shaft member by pressure
during winding of the packaging paper 20 that indicates or implies that the uncut
portions should be made of a less flexible material, as contended by the examiner on
page 6 of the answer.
In light of the above, despite the lack of literal support in appellant’s application
as originally filed for the “each said recess forming a thinner, more flexible portion of the
wall” limitation, we conclude that appellant’s specification would have conveyed such to
one of ordinary skill in the art. Accordingly, the examiner’s rejection under 35 U.S.C. §
112, first paragraph, is not sustained.
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