Appeal No. 98-2769
Application 08/485,960
the prior art relied upon by the examiner to these claims in deciding the question of either anticipation
under 35 U.S.C. § 102(b) or obviousness under 35 U.S.C. § 103 without resorting to considerable
speculation and conjecture as to the exact scope and content of these claims. This being the case, we
are constrained to reverse the examiner's rejection of claims 1, 2, 5 through 8, 10 through 18 and 20
under 35 U.S.C. § 102(b) based on Sibalis ‘479, the rejection of claims 1 through 20 under 35 U.S.C.
§ 102(b) based on Phipps ‘894, and the rejections of claims 3, 4, 9 and 19 under 35 U.S.C. § 103, in
light of the holding in In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). We
hasten to add that this reversal of the examiner's rejections is not based on the merits of the rejections,
but only on technical grounds relating to the indefiniteness of the appealed claims.
This leaves for our further consideration on appeal only the examiner’s rejections of claims 21
through 27 under 35 U.S.C. § 102(b) based on Sibalis ‘479 and Phipps ‘894. Independent claim 21
on appeal specifies that the controller therein operates at a predetermined, substantially fixed electrical
output and that it is “adapted to be detachably connected to a plurality of therapeutic agent sources.”
Since we find no disclosure in Phipps ‘894 that the controller therein is adapted to be detachably
connected to a plurality of therapeutic agent sources, we will not sustain the examiner’s rejection of
claim 21, or claims 22 through 27 which depend therefrom, under 35 U.S.C. § 102(b) based on
Phipps ‘894. Simply stated, we can not agree with the examiner’s position (answer, pages 6-7) that
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