Appeal No. 2005-0361
Application 10/252,177
DISCUSSION
I. The examiner’s rejections
We shall not sustain the standing 35 U.S.C. § 103(a)
rejection of claims 18, 23 and 24 as being unpatentable over
Cherry in view of Kikuchi, or the standing 35 U.S.C. § 103(a)
rejection of claims 18 through 24 as being unpatentable over
Kikuchi in view of Cherry. For the reasons expressed below, the
scope of claims 18 through 24 is unclear. Accordingly, the
standing prior art rejections thereof must fall since they are
necessarily based on speculative assumption as to the meaning of
the claims. See In re Steele, 305 F.2d 859, 862-63, 134 USPQ
292, 295 (CCPA 1962). It should be understood, however, that our
decision in this regard is based solely on the indefiniteness of
the subject matter claimed, and does not reflect on the adequacy
of the prior art evidence applied in support of the rejections.
rejection (see page 2 in the answer) in light of an “amendment”
of claim 24 in the main brief (see pages 2, 5 and 12, and the
version of claim 24 appended thereto). This “amendment” has not
been formally entered into the record, however, presumably due to
the fact that PTO practice prohibits the inclusion of amendments
in a brief (see MPEP §§ 1206 and 1207).
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