Appeal No. 1998-2521
Application No. 08/184,212
not necessarily mean that exclusive of the interlocking extremities and the attaching
means, the claimed strip is less than 1 centimeter thick. For this reason alone, the
disclosure as originally filed does not reasonable convey to one skilled in the art that
appellant had possession of the subject matter claimed in claims 37-48 to meet the test in
Kaslow.
Furthermore, we find no descriptive support in the specification as filed for the
recitation in claims 41-44 that the peripheral notch will hold an auxiliary tube “without
cam or shoe.” For this additional reason, claims 41-44 are based on a disclosure which,
as filed, does not satisfy the description requirement in the first paragraph of § 112.
With regard to the § 112, second paragraph, rejection of claims 41-44, the
meaning of a “cam” and the meaning of a “shoe” in the context used in claims 41-44 are
not clear. As a result, the metes and bounds of claims 41-44 cannot be determined with a
reasonable degree of precision as required in In re Venezia, 530 F.2d 956, 958, 189
USPQ 149, 151 (CCPA 1976).
In summary, the examiner’s decision rejecting appealed claims 1 through 33 and
37 through 48 under 35 U.S.C. § 103 is affirmed with respect to claims 1 through 9, but is
reversed with respect to claims 10 through 33 and 37 through 48. In addition, new
grounds of rejection have been entered against claims 37 through 48 pursuant to 37 CFR
§ 1.196(b ).
In addition to affirming the examiner's rejection of one or more claims, this
decision contains new grounds of rejection pursuant to 37 CFR § 1.196(b) (amended
effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b)
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