Appeal 2006-1508
Application 10/254,979
([Ichimaru’s] rotatable member 2) with a hole” (answer, page
7). The examiner further argues that “one of ordinary skill
will consider the specification as a whole for an exemplary
meaning illustrated by elements 62 and 64 in appellant’s
drawing figures of what constitutes a long hole part, but the
Examiner believes the claims are given the broadest reasonable
interpretation in light of the specification, and assumptions
of what a phrase or term(s) meaning [sic] are is [sic] not read
into the claim” (answer, page 8). The examiner’s
interpretation of “long hole part” as meaning a long part with
a hole is not reasonable in view of the disclosure in the
appellant’s specification that shafts 48 and 50 move,
respectively, in long hole parts 62 and 64 (¶ 0038).
The examiner argues that there inherently is at least a
slight or minute tolerance or gap which allows movement of
shaft 31 relative to rotating member 2, especially because
Ichimaru does not disclose that the axial attachment between
shaft 31 and rotating member 2 is made permanent (answer,
page 8). When an examiner relies upon a theory of inherency,
the examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the
teachings of the applied prior art. Ex parte Levy, 17 USPQ2d
5
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