Appeal No. 98-2031
Application 08/794,154
Minnesota,” as is required in claim 37 on appeal, we are unable to apply prior art to this claim and
unable to sustain the examiner’s rejection based on Runckel and Chen. Our attempt to compare the
claimed subject matter with the prior art has made it apparent that considerable speculation as to the
meaning of the above-quoted terminology in claim 37 and assumptions concerning the scope of the
claim would be necessary in order to determine exactly what is being claimed. Since a rejection based
on prior art under 35 U.S.C. § 103 should not be grounded on such speculation and assumptions, see,
e.g., In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962), we are constrained to
reverse the examiner's rejection of appealed claim 37 under 35 U.S.C. § 103. This decision should not
be construed in any way as a commentary on the prior art applied by the examiner. In light of the
indefiniteness in this claim, we take no position on the merits of the prior art applied against claim 37.
With regard to the examiner’s rejection of claims 50 and 59 on appeal, we agree with the
examiner that Chen (col. 7, lines 5-17) would have been suggestive to one of ordinary skill in the art of
a compliant and resiliently deformable gelatinous elastomer of the type set forth in claim 1 on appeal
with a thin distortable membrane covering on the elastomer of the type required in appellants’ claim 50
on appeal and of the use of such a material in Runckel for the cushioning/sealing pad (42) therein. We
do not agree with the examiner that Runckel in any way would have been suggestive of an attachment
means as in claim 59 on appeal, which attachment means allows removable attachment of the sealing
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