Appeal No. 2001-2366 Page 7
Application No. 08/926,533
The Examiner’s Rejection
The examiner has rejected all of the claims as being unpatentable over Roe.
However, as we explained above, no definite meaning can be ascribed to certain terms
in the claims. Since it is clear to us that considerable speculation and assumptions are
necessary to determine the metes and bounds of what is being claimed, and since a
rejection under 35 U.S.C. § 103 cannot be based upon speculation and assumptions,
we are constrained to reverse the examiner's rejection. In re Steele, 305 F.2d 859,
862, 134 USPQ 292, 295 (CCPA 1962). We hasten to point out, however, that this
action should not be construed as an indication that the claimed subject matter would
not have been obvious in view of the prior art cited against the claims. We have not
addressed this issue, for to do so would require on our part the very speculation which
formed the basis of our rejection under Section 112.
SUMMARY
The rejection of claims 1, 7-13, 17 and 23 as being unpatentable over Roe is not
sustained.
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007