Appeal No. 1999-0705 Page 6
Application No. 08/129,615
Matthews, Donaldson and Cole. It follows then that we also shall not sustain the examiner's 35
U.S.C. § 103 rejections of claims 13 and 14, which depend from claim 1, as being
unpatentable over Matthews in view of Donaldson and O'Donnell and claims 23 and 24, which
depend from claim 17, as being unpatentable over Matthews in view of Donaldson, Cole and
O'Donnell.
Turning finally to claim 33, however, for the reasons discussed below in the new
ground of rejection, we conclude that the claim language fails to particularly point out and
distinctly claim the subject matter which the appellants regard as the invention as required by
the second paragraph of 35 U.S.C. § 112. While we might speculate as to what is meant by
the claim language, our uncertainty provides us with no proper basis for making the
comparison between that which is claimed and the prior art as we are obliged to do. Rejections
under 35 U.S.C. § 103 should not be based upon "considerable speculation as to the meaning
of the terms employed and assumptions as to the scope of the claims." In re Steele, 305 F.2d
859, 862, 134 USPQ 292, 295 (CCPA 1962). When no reasonably definite meaning can be
ascribed to certain terms in a claim, the subject matter does not become obvious, but rather the
claim becomes indefinite. In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970). Accordingly, we are constrained to reverse, pro forma, the examiner's rejection of
claim 33 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 35 U.S.C. § 103 rejection.
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