Appeal No. 2004-2210 Page 5
Application No. 09/374,117
There is another problem with the claims. Appellant argues that the claims require that
the core layer be stretched to create about 27.6% to about 42% microvoids (Brief, p.3), but there
is no affirmative limitation in the claims to that effect. Rather, both independent claims precede
the limitation with the words “where upon.” The words “where upon” indicate that the action of
stretching is a future action which may be done but is not required to be done. On the other
hand, the claims are directed to a breathable film and it is not clear that the film is breathable
before stretching as the micropores are created in the core layer only upon stretching. It appears
that the claims are not limited as intended by Appellant. The claims are thus indefinite for this
reason as well. See In re Collier, 397 F.2d 1003, 1005, 158 USPQ 266, 267-68 (CCPA 1968).
For the above reasons, we conclude that the claims do not satisfy the requirements of 35
U.S.C. § 112, ¶ 2 and, therefore, we newly reject claims 26-29 and 32 under 35 U.S.C. § 112, ¶ 2
pursuant to our authority under 37 CFR § 41.50(b).
Because the scope of the claims is unclear, we are unable to resolve the issues on appeal
with respect to the rejection of claims 26-29 and 32 as anticipated by McCormack. To resolve
those issues, we would have to resort to speculation as to the meaning of the terms of the claims.
It would be inappropriate for us to resort to such speculation. In re Steele, 305 F.2d 859, 862-63,
134 USPQ 292, 295 (CCPA 1962)(A rejection should not be based on speculations as to the
meaning of the terms employed and assumptions as to the scope of the claims). We, therefore,
procedurally reverse the rejection over McCormack. We emphasize that our reversal of the 35
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