Appeal No. 96-3999 Page 8
Application No. 08/395,719
enter a rejection based on indefiniteness under 35 U.S.C. § 112,
second paragraph.
We recognize the inconsistency implicit in our holding that
claim 1 is rejectable under 35 U.S.C. § 112, second paragraph,
with a holding that claim 1 is anticipated under 35 U.S.C. § 102.
Normally, when substantial confusion exists as to the
interpretation of a claim and no reasonably definite meaning can
be ascribed to the terms in a claim, a determination as to
patentability over the prior art is not made. See In re Steele,
305 F.2d 859, 134 USPQ 292 (CCPA 1962) and In re Wilson, 424 F.2d
1382, 165 USPQ 494 (CCPA 1970). However, in this instance, we
consider it to be desirable to avoid the inefficiency of
piecemeal appellate review. See Ex parte Ionescu, 222 USPQ 537
(Bd. App. 1984). Accordingly, we interpret appellant's claim 1
according to the above-noted first interpretation.
The inquiry as to whether a reference anticipates a claim
must focus on what subject matter is encompassed by the claim and
what subject matter is described by the reference. As set forth
by the court in Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S.
1026 (1984), it is only necessary for the claims to "'read on'
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