Appeal 2006-2404
Application 10/884,619
§ 103(a) as unpatentable over the combined teachings of Wasinger and the
AAPA (id.).
We REVERSE the rejections of claims 1-6 under both § 112, second
paragraph, and § 103(a) essentially for the reasons stated in the Brief, as well
as those reasons set forth below. We AFFIRM the rejections of claim 7
under both § 112, second paragraph, and § 103(a) for the reasons stated
below. Accordingly, the decision of the Examiner is AFFIRMED-IN-
PART.
OPINION
A. The Rejection under § 112, second paragraph
The Examiner submits evidence that claims 1-7 fail to correspond in
scope with that which Appellant regards as the invention, referring to the
statement by Appellant in the Paper dated Oct. 17, 2003 (Answer 2).
Accordingly, the Examiner finds that Appellant “has not claimed all of the
specific limitations that would limit the invention to the use of only Jaeger
Tri-Packs” (id.).
Appellant argues “that the specification in referring to Jaeger Tri-
Packs is nothing more than an example of a commercially available material
providing ‘open spherical balls having internal ribs’ and that the citation to
these commercial products should not be considered limiting” (Br. 5).
Appellant notes that the Summary of the Invention and the claims, as
originally filed, are not so limited (id.).
If the scope of the subject matter embraced by a claim is clear, and if
the Appellant has not otherwise indicated that he intends the claims to be of
a different scope, then the claim does particularly point out and distinctly
claim the subject matter which the Appellant regards as his invention. See
3
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