Appeal No. 1997-4234
Application No. 08/423,211
are to be ascertained; and the level of ordinary skill in the pertinent art resolved.
Against this background, the obviousness or nonobviousness of the subject matter is
determined."). In order to compare the claimed subject matter with the relevant prior
art we would first have to speculate or make assumptions as to what is intended by the
claim. However, since a rejection under 35 U.S.C. § 102 or 35 U.S.C. § 103 can not be
based on speculations and assumptions, (See In re Steele, 305 F.2d 859, 862-63, 134
USPQ 292, 295-96 (CCPA 1962) and In re Wilson, 424 F.2d 1382, 1385, 165 USPQ
494, 496 (CCPA 1970)), we vacate the prior art rejection of claims 1-27 and 29. We
urge the appellants and examiner to work together to determine what the appropriate
interpretation of the claim should be. When the proper interpretation of the claims has
been made, it will then be appropriate to compare the claimed subject matter with the
relevant prior art.
Should further prosecution occur, we would note that the examiner's response to
appellants' arguments that the Office has failed to consider the claim language "a
substantially sheet like substrate" (Answer, page 9) because "[i]t is not possible for the
Office to give consideration to this limitation since it is not supported by the original
disclosure and is new matter" is improper. We would urge the examiner to compare the
facts in this case with those considered in the decision in Ex parte Pearson, 230 USPQ
711 (Bd. Pat. App. Int. 1985) wherein the rejection of appealed claims under 35 U.S.C.
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