Appeal 2006-2016
Application 10/347,345
the recovered paper and impurities” (claims 22 and 43) are not satisfied by
Krebs’ disclosure (Br. 12).
We are unpersuaded by Appellant’s argument regarding the impurities
in Krebs’ “finer fraction” 13. Appellant has not provided a definition of
“impurities” in his Specification that would govern the Examiner’s
interpretation of such claim term. Phillips v. AWH Corp., 415 F.3d 1303,
1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). Hence, we find it
reasonable that the claim term “impurities” may include impurities
commonly found on used paper, for example, toner particles or ink residue
on the “contaminated, used paper” (Krebs, col. 1, ll. 32). Accordingly, we
find that Krebs’ “finer fraction” 13 of the “contaminated, used paper”
reasonably contains impurities, such as toner particles or ink residue, that
satisfies Appellant’s claim recitations of “discharging the recovered paper
and impurities” (claim 1) and “to discharge the recovered paper and
impurities” (claims 22 and 43).
Having determined that Krebs Figure 2 embodiment discloses
Appellant’s argued distinctions, we affirm the Examiner’s § 102(b) rejection
of argued claims 1, 22, and 43.
CLAIMS 3, 5, 24, AND 26
The Examiner’s § 102 rejection of claims 3, 5, 24, and 26 is based on
the doctrine of inherency (Answer 3). However, Appellant’s arguments
regarding these claims fail to address the Examiner’s inherency
determination. For example, Appellant’s arguments regarding claims 5 and
26 merely state that “. . . KREBS fail[s] to positively disclose rotating the
drum and the coil at the same rotational speed . . .” (claim 5) or “. . . KREBS
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Last modified: September 9, 2013