Appeal 2006-2714
Application 10/228,898
claims 5-9 over multiple references under 35 U.S.C. § 102(b) is improper
because the Examiner uses the secondary references to expand on the
meaning of the term “steel wool” (Reply Br. 1-3).
Appellant may be technically correct that the Examiner has not
expressly construed the claim terminology “sanding pad” on the record.2
Implicit in the Examiner’s rejection, however, is a construction of “sanding
pad” as being a pad having a surface recognized in the sanding art for use in
sanding or abrading surfaces. In any event, such a construction is consistent
with Appellant’s Specification. We therefore construe “sanding pad” in
Appellant’s claim 1 as a pad having a surface recognized in the sanding art
for use in sanding or abrading surfaces. The preamble language “drywall
sanding device” further limits the claimed subject matter to devices that are
capable of use in sanding drywall.
Appellant’s characterization of the Examiner’s use of the secondary
references is not accurate. The Examiner clearly uses Deware, Nelson,
Carter, Evensen, and Hurst, the secondary references cited in the statement
of the rejection, as well as several other references cited on page 5 of the
Answer, as evidence that “steel wool” is inherently capable of use as a
sanding surface and recognized as such by those of skill in the art.
Consequently, according to the Examiner (Answer 3, 5), Sims’ steel wool
pad 88 (Sims, col. 3, ll. 40-41; col. 5, l. 13) meets the “sanding pad”
limitation of claim 5. The secondary references are not used by the
2 It is noteworthy that Appellant has not offered a definition for the claim
terminology “sanding pad,” either in the Specification or in the Brief or
Reply Brief.
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