Appeal No. 97-4151
Application 08/379,181
However, we find no written description of such an organizer
in the application as filed. Cf. In re Barker, 559 F.2d 588,
194 USPQ 470 (CCPA 1977), cert. denied, 434 U.S. 1064 (1978).
Rejections Under 35 USC § 103
In general, if a claim is indefinite such that it is
necessary to indulge in considerable speculation as to the
meaning of terms therein, it should be rejected under § 112,
and not under 35 USC § 103. In re Steele, 305 F.2d 859, 862,
134 USPQ 292, 295 (CCPA 1962). However, in some instances,
even though a claim is rejected under § 112, second paragraph,
the merits of a rejection of that claim under § 103 may still
be considered. See Ex parte Saceman, 27 USPQ2d 1472 (BPAI
1993).
In the present case, we would have to engage in such
considerable speculation as to the meaning of claims 2, 3, 5
to 7, 12, 13 and 15 to 17, that consideration of the § 103
rejections of those claims would not be appropriate, and
accordingly, said rejections will not be sustained, pro forma.
This is not to say, however, that claims 2, 3, 5 to 7, 12, 13
and 15 to 17 would necessarily be patentable over the applied
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007