Appeal No. 2006-1557 Παγε 6
Application No. 10/220,514
We disagree for reasons stated by the examiner in the
answer. As noted by the examiner at page 5 of the answer, Elger
expressly describes cutting the web at a point upstream of or in
a drying section of a paper machine. See column 3, lines 23-27
and column 7, lines 13-19) of Elger. As officially noticed by
the examiner in the final action, the paper machine includes a
head box, former, press, then a dryer. Thus, the description in
Elger of cutting the web upstream of the dryer would have
conveyed to one of ordinary skill in the art that Elger was in
possession of a method wherein the raw web was cut or divided
into part-webs at a location immediately downstream of either the
head box, former or press, as required by claim 19. The description
of the process and equipment conveyed by Elger embraces the claimed paper dividing
location.3 Not withstanding the use of “outlet” and “output” in a seemingly
3 See In re Schaumann, 572 F.2d 312, 316, 197 USPQ 5, 9 (CCPA 1978)(prior
art preferred genus which disclosed limited species, inclusive of claimed species,
constituted description of the claimed species within the meaning of 35 U.S.C. §
102(b)); In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962) (prior art
genus containing only 20 compounds inherently anticipated a claimed species within the
genus because "one skilled in [the] art would . . . envisage each member" of the genus).
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