Appeal No. 95-4462
Application 08/190,950
dominance. See In re Hammack, 427 F.2d 1378, 1382, 166 USPQ
204, 208 (CCPA 1970).
While we might speculate as to what is meant by that
claim language, our uncertainty provides us with no proper
basis for making the comparison between that which is claimed
and the prior art as we are obligated to do. Rejections under
35 U.S.C. § 103 should not be based upon “considerable
speculation as to meaning of the terms employed and
assumptions as to the scope of such claims.” In re Steele,
305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). When no
reasonably definite meaning can be ascribed to certain terms
in a claim, the subject matter does not become obvious, but
rather the claim becomes indefinite. In re Wilson, 424 F.2d
1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Accordingly, we
are constrained to reverse the examiner’s rejections of the
appealed claims as being unpatentable over the prior art. We
hasten to add that this is a procedural reversal rather than
one based upon the merits of the rejections. We take no
position as to the pertinence of the prior art as applied by
the examiner in his rejections.
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