Appeal No. 2000-0920
Application No. 08/829,034
meant by that 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 obligated to do. Rejections
based on prior art 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 anticipated or 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 the examiner’s rejections of appealed claims 11-17 as
being anticipated by or unpatentable over the applied prior art.
We hasten to add that this reversal is not based upon any
evaluation of the merits thereof and does not preclude the
examiner’s advancement of a rejection predicated upon that art
against a definite claim.
The rejection under 35 U.S.C. § 103 based on Holt in view of
Hirayama.
Claims 10, 37 and 38 depend either directly or indirectly
from claim 1 and further set forth details of the infiltrating
metal alloy (claims 10 and 38) and ceramic powder used in making
12
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