Appeal No. 98-0685
Application No. 08/513,529
Claim 11 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Pagano in view of Miner and Ferm.
Each of these rejections is bottomed on the examiner's
view that it would have been obvious to have substituted in
Pagano, for the socket connection 44, 46, the socket
connection shown by Miner in Figs. 8-10. However, for reasons
stated infra in our new rejection entered under the provisions
of 37 C.F.R. § 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 rejections of claims 1, 2
and 5-11 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 rejections.
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