Appeal No. 98-1427
Application No. 08/511,310
Claim 1 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Pond.
The full text of the examiner's rejection and response to
the argument presented by appellant appears in the first
office action and answer (Paper Nos. 3 and 10), while the
complete statement of appellant’s argument can be found in the
main and reply briefs (Paper Nos. 9 and 11).
OPINION
We are constrained to reverse the rejection of claim 1
under 35 U.S.C. § 102(b), and enter a new ground of rejection,
infra, for the reason which follows. As explained below, our
reversal is procedural in nature, and is not based upon an
assessment of the applied prior art relative to the claimed
subject matter, i.e., the merits of the examiner’s rejection.
When claimed subject matter is indefinite, an evaluation
thereof relative to prior art is inappropriate. See In re
Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970) and
In re Steele, 305 F.2d 859, 862-863, 134 USPQ 292, 295 (CCPA
3
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