Appeal No. 1999-0510
Application No. 08/728,787
Appellant’s primary argument in opposition to this
rejection is that Santi does not disclose an article which can
"conform to the article thickness as it is folded upon itself"
(brief, page 5; also reply brief, page 2). However, as
indicated in rejection (B) under 37 CFR § 1.196(b), supra, the
"folded upon itself" language of claim 1 is indefinite. In
such a situation, the claims should not be rejected over prior
art if, as in this case, the rejection would have to be based
on considerable speculation as to the meaning of the claimed
terms and assumptions as to what the claims cover. In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962).
Accordingly, we will not sustain the § 102(b) rejection
of claims 1, 2, 4 and 6. This is a pro forma action which
should not necessarily be taken as an indication that these
claims would be patentable if the § 112, second paragraph,
rejection were overcome.
Rejection (2)
For the same reasons as stated with regard to rejection
(1), supra, the rejection of claims 7 to 16 will not be
sustained, pro forma.
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