Appeal No. 95-3797
Application 07/975,764
requirements of 35 U.S.C. § 112, second paragraph. Normally a
claim which fails to comply with the second paragraph of § 112
will not be analyzed as to whether it is patentable over the
prior art since to do so would of necessity require
speculation as to the meets and bounds of the claimed subject
matter. See In re Steel, 305, F.2d 859, 862-863, 134 USPQ
292, 295-296 (CCPA 1962); and In re Wilson, 424 F.2d 1382,
1385, 165 USPQ 494, 496 (CCPA 1970). Nevertheless, in this
instance, in an effort to avoid piecemeal appellate review
(See Ex parte Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993) and Ex
parte Ionescu, 222 USPQ 537, 540 (Bd.App.1984)), we make the
following interpretation of the terminology appearing in claim
1 for the purpose of reaching the rejection based on prior
art. In claim 1, line 13, we interpret “the reflecting
surfaces” to be “the second and third reflecting surfaces.”
We now turn to the examiner’s rejection of claims 1-
3 and 5 as unpatentable over Bentensky in view of Asano. In
the examiner’s view, Bentensky discloses each element of claim
1 except:
...the fourth reflecting surface (M4)
adapted to define a second optical path
through the viewfinder such that a second
-4-4
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