Appeal No. 98-0384
Application No. 08/579,639
Claims 17 and 18 are rejected under 35 U.S.C. § 103 over
the references as applied to claims 2, 8, 13 and 20 above, and
further in view of the "conventional use of perforations."
The rejections are explained on pages 3 and 4 of the
answer. The arguments of the appellant and examiner in
support of their respective positions may be found on pages 2-
7 of the brief and pages 5-8 of the answer.
OPINION
For reasons stated infra in our new rejection under the
provisions of 37 CFR 1.196(b), we are of the opinion that
claims 2-6, 8-13, 15, 17, 18 and 20 fail to satisfy the
requirements of 35 U.S.C. § 112, second paragraph. We note
that normally a claim which fails to comply with the second
paragraph of § 112 will not be analyzed as to whether it is
patentable over the prior art since to do so would of
necessity require speculation with regard to the metes and
bounds of the claimed subject matter. See In re Steele, 305
F.2d 859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962) and In re
Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
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