Appeal No. 96-0501
Application 08/101,499
claim 34 as amended now calls for the body of fill material to be
compressed outside the container to a shape corresponding to the
contour of the article, whereas in Gianakos the fill material is
expanded to that shape. We therefore conclude that even if
Gianakos were applied in the manner proposed by the examiner, all
the limitations of amended claim 34 (and therefore of dependent
claims 35 and 36) would not be met. Rejections (3) and (4) will
therefore not be sustained.
Rejection Under 37 CFR 1.196(b)
Pursuant to 37 CFR 1.196(b), claims 25, 31 and 32 are
rejected for failure to comply with the second paragraph of
35 U.S.C § 112. 3
The test for compliance with §112, second paragraph, is
Whether the claim language, when read by a
person of ordinary skill in the art in light of
the specification, describes the subject matter
with sufficient precision that the bounds of
the claimed subject matter are distinct.
In re Merat, 519 F.2d 1390, 1396, 186 USPQ 471, 476 (CCPA 1975).
The preamble of claim 25 recites “A cushion as in Claim 8,”
while the preamble of claim 8 recites “A packing device
comprising:.” Setting aside the fact that the term “cushion” in
3Although under some circumstances lack of compliance with
§ 112, second paragraph, may preclude consideration of a
rejection under §103, that is not the case here. Cf. Ex parte
Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. & Int. 1993).
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