Appeal No. 2001-0436
Application No. 09/040,361
engine unit and the intake manifold. Based on this disclosed
relationship, and Webster’s Dictionary3 definition of “between”
as meaning “in the interval or position separating,” it is
inaccurate to describe the unnumbered space situated to the right
of the steering gear unit 14 (as viewed in Figure 3) as a recess
formed between the upper portion of the transmission unit 10 and
the upper portion (i.e., the intake manifold 8) of the engine
unit, as now claimed.
While we might speculate as to what is meant by the claim
language discussed above, our uncertainty provides us with no
proper basis for making the comparison between that which is
claimed and the prior art, as we are obligated to do. Rejections
based on 35 U.S.C. § 102(b) and/or 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.”
See 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
anticipated or obvious, but rather the claim becomes indefinite.
See In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
3Id.
5
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