Appeal No. 97-4184
Application No. 08/521,256
contradictory language means, or what effect it is intended to
have upon the preceding portion of the claim.
Moreover, as we stated above, the specification provides
no precise meaning to be accorded to the term “preload.” And
to further complicate this matter, the recitation in the
specification differs from that recited in claim 1, in that
the specification states that the preload is provided by the
“prestrained substrate,” and it acts upon “the product,” a
term which is not used in the claims and whose meaning is not
established in the specification, while claim 1 states that
the preload is provided by “said prongs and said pre-strained
[prestrained?] substrate” (emphasis added).
When no definite meaning can be ascribed to certain terms
in a claim, as is the case with independent claim 1, 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). Since it is clear to us that
considerable speculation and assumptions are necessary to
determine the metes and bounds of what is being claimed, and
since a rejection under 35 U.S.C. § 103 cannot be based upon
speculation and assumptions, we are constrained not to sustain
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