Appeal No.1998-2486
Application No. 08/751,375
the cavity [column 3, line 54], it would appear, again, that there is no compression of the
resilient jacket in order to conform to the selected form factor, as claimed.
The examiner responds by identifying the resilient material of Morehouse as “foam
rubber” which has “inherent characteristics of having different dimensions when
compressed then uncompressed” [answer-page 5]. It is true that the resilient material of
Morehouse is made of foam rubber which is compressible but the examiner has not
identified, and cannot identify, any portion of Morehouse teaching or suggesting that the
dimension of the disk/jacket combination exceeds the form factor in an uncompressed
state but compresses to conform to that form factor. It may be fair to say that the
disk/jacket combination of Morehouse does conform to the selected form factor, but no
compression takes place in order to conform and the external dimension of the
uncompressed combination does not exceed the form factor.
Accordingly, we will not sustain either the rejection of claims 1-16 and 20 under 35
U.S.C. § 102(b) or the rejection of claims 17-19 and 21 under 35 U.S.C. § 103.
Thus, we have sustained the rejection of claims 17-19 and 21 under 35 U.S.C.
§ 112, first paragraph, but we have not sustained the rejection of claims 1-16 and 20 under
35 U.S.C. § 102(b) or the rejection of claims 17-19 and 21 under 35 U.S.C.
§ 103.
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