Appeal No. 98-3404
Application 08/600,813
examiner to these claims in deciding the question of anticipation under 35 U.S.C.
§ 102(b) without resorting to considerable speculation and conjecture as to the meaning of the
questioned limitations in the claims. This being the case, we are constrained to reverse the examiner's
rejection of claims 1 through 3, 5 through 7, 9 and 11 through 13 under 35 U.S.C.
§ 102(b) in light of the holding in In re Steele, 305 F.2d 858, 134 USPQ 292 (CCPA 1962). We
hasten to add that this reversal of the examiner's rejection is not based on the merits of the rejection, but
on technical grounds relating to the indefiniteness of the appealed claims.2
Regarding the examiner’s rejection of claims 11 and 13 under 35 U.S.C. § 112, first
paragraph, we find that we are in agreement with appellants’ position as expressed on pages 15 and
16 of the brief. We also note that aside from urging that the limitations added to claims 11 and 13 by
the amendment filed February 28, 1997 (Paper No. 4) are “not supported by the original disclosure”
(answer, page 5), the examiner has not explained why he has reached such a conclusion, nor in any
way responded to appellants’ position on this issue as set forth on pages 15 and 16 of the brief. Thus,
in light of the lack of any convincing statements by the examiner, and since we are generally in agree
2As mere guidance to the examiner and appellants, we again note that the claims of the present
application are directed to a “handle attachment” per se and not to the combination of a handle
attachment and a fishing rod as some of the comments and arguments in the answer and brief would
seem to imply. Thus, a complete search of the presently claimed subject matter would appear to require
searching outside of Class 43, “Fishing, Trapping and Vermin Destroying.” As an example, Class 16,
Subclass 110R and Class 81, Subclass 489 would appear to be areas deserving of inquiry.
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