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Ex parte LOO et al. - Page 9Legal Research Home > Board of Patent Appeals and Interferences > 1997 > Ex parte LOO et al. - Page 9
Appeal No. 95-4714
Application No. 08/046,476
completed. 3
For the foregoing reasons, claim 13 is indefinite and in
violation of the second paragraph of § 112. Furthermore, because
the "disposed within the kernel" limitation was not present in
the application as filed, claim 13 also violates the written
description requirement of the first paragraph of § 112.
Dependent claim 14 does not cure these violations and is
therefore rejected for the same reasons.
Inasmuch as claims 13 and 14 are indefinite, it is not
possible to apply the prior art to these claims in deciding
patentability without disregarding portions of the express
wording of the claims and thus resorting to speculation and
conjecture as to the particular invention defined therein. For
this reason, we will not sustain the examiner's § 103 rejection
of these claims based on Stiffler. See In re Steele, 305 F.2d
859, 862-63, 134 USPQ 292, 295 (CCPA 1962).
Nevertheless, we have considered Stiffler to determine the
extent to which it satisfies the claim limitations other than
those in the indefinite paragraph and conclude that it does.
Beginning with the preamble, Stiffler discloses a computer system
3 Also, there is no antecedent basis for "said main
memory."
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