Appeal No. 95-0972 Page 13
Application No. 07/650,453
THE OBVIOUSNESS REJECTION
Claims 1 through 19, 23 and 25
Considering now the rejections of claims 1 through 19, 23
and 25 under 35 U.S.C. § 103, we have carefully considered the
subject matter defined by these claims. However, for reasons
stated supra in our new rejection under the second paragraph
of Section 112 entered under the provisions of 37 CFR
1.196(b), no reasonably definite meaning can be ascribed to
certain language appearing in the claims. As the court in In
re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970) stated:
All words in a claim must be considered in judging the
patentability of that claim against the prior art. If no
reasonably definite meaning can be ascribed to certain
terms in the claim, the subject matter does not become
obvious --the claim becomes indefinite.
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 based on prior art
cannot be based on speculations and assumptions, see In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962), we
are constrained to reverse, pro forma, the examiner's
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