Appeal No. 95-0878
Application 07/921,820
All words in a claim must be considered in judging the patentability of that claim against the
prior art. If no reasonable definite meaning can be ascribed to certain terms in the claim,
the subject matter does not become obvious--the claim becomes indefinite.
As to whether claims 3, 21 and 22 satisfy the requirements of the first paragraph of 35 U.S.C. § 112, a
determination of the appropriateness of this rejection would also not be proper at this time because any
decision would be based on speculations and assumptions.
Accordingly, for the foregoing reasons the examiner's rejections under 35 U.S.C. § 102 and the
rejection under the first paragraph of 35 U.S.C. § 112 are summarily reversed, and all of the claims on
appeal, claims 1, 3, 4, 6-15 and 17-20, 21 and 22, are rejected under 35 U.S.C. § 112, second
paragraph, pursuant to 37 CFR § 1.196(b), for there reasons set forth supra. In re Steele, supra; Ex
parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Int. 1989). We hasten to add that this is a
technical reversal of the rejections under 35 U.S.C. §§ 102 and 112, first paragraph, and not a reversal
based upon the merits of the rejections.
This decision contains a new ground 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) provides that, “A new ground of
rejection shall not be considered final for purposes of judicial review.”
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