Appeal 2007-0796
Application 10/236,088
The issue raised by Appellant is whether the cylindrical wall portion
of Genuise's spool 34 "forms a chamber of dimensions suitable to hold
pills," as called for in claim 21 (Reply Br. 9). Specifically, Appellant argues
that a wall alone which is part of a rotating spool 34 having no bottom wall
such that it may be positioned around a cylindrical member 30 does not
necessarily form a chamber of dimensions suitable to hold pills. Id. This
argument is not commensurate with the scope of claim 21, which does not
require that the wall actually form a chamber capable, by itself, of holding
pills. A person of ordinary skill in the art would understand that a
cylindrical wall, by itself, as recited in claim 21, is not capable of holding
pills or other objects without cooperation with other unrecited structure, and
would read claim 21 as requiring that the cylindrical wall have dimensions
sufficient to accommodate pills, in a chamber defined in part thereby. We
find that the dimensions of the inner chamber defined by the cylindrical wall
of spool 34 of Genuise are sufficient to hold at least pills of very small size2,
which is all that claim 21 requires. While Genuise does not explicitly
indicate that the drawings are drawn to scale or specify exact dimensions,
any notion that a workable retraction member 12 would have spool 34
dimensions so small as to be incapable of accommodating pills of even the
smallest known pill size within the cylindrical wall portion thereof is
untenable. The rejection is sustained as to claim 21.
Claim 22:
Appellant argues that Genuise fails to teach a means for biasing the
elongated member to automatically retract into the annular housing after the
elongated member has been extracted (App. Br. 19). This argument is not
2 Claim 21 does not define any minimum pill size.
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