Appeal No. 96-1819
Application 08/112,151
of claims 8 and 10 under 35 U.S.C. § 112, first paragraph, and
(3) enter new rejections of claims 8-10 under 35 U.S.C. § 112,
second paragraph.
Considering first the rejection of claims 8-10 under 35
U.S.C. § 103 based on the combined teachings of Marx and Choski,
we have carefully considered the subject matter defined by these
claims. However, for reasons stated infra in our new rejections
entered under the provisions of 37 CFR § 1.196(b) no reasonably
definite meaning can be ascribed to certain language appearing in
the claims. In comparing the claimed subject matter with the
applied prior art, it is apparent to us that considerable
speculations and assumptions are necessary in order to determine
what in fact is being claimed. Since a rejection on prior art
cannot be based on speculations and assumptions (see In re
Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962)
and In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970)), we are constrained to reverse the examiner's rejection of
claims 8-10 under 35 U.S.C. § 103. We hasten to add that this is
a procedural reversal rather than one based upon the merits of
the § 103 rejection.
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