Appeal No. 2006-1814
Application 10/365,314
In light of these new rejections, we pro forma reverse the outstanding respective
rejections of claims 3 and 5 through 29 under 35 U.S.C. § 102 and 35 U.S.C. § 103 because the
subject matter encompassed by these claims on appeal must be reasonably understood without
resort to speculation to apply prior art to them. Note In re Steele, 305 F.2d 859, 862, 134 USPQ
292, 295 (CCPA 1962). Note also In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496
(CCPA 1970). It is important to note that the reversal of the outstanding art rejection under
35 U.S.C. § 102 and 35 U.S.C. § 103 should not necessarily be construed as a reversal of the
rejections on the merits. The prior art relied upon by the examiner may be pertinent to properly
definite claims within 35 U.S.C. § 112. Therefore, the examiner is free to choose to reinstitute
during any future prosecution art rejections and utilize any additional or different prior art. It is
noted in passing that the prior art of record relied upon by the examiner does not reflect a sloped
hood with an ability by itself (such as by the disclosed hood clamps) to constrain a portion of a
second cable other than the one cable that may be contained within the hood of the connector.
In a corresponding manner, we remand this application to the examiner for consideration
of the following matters. The final rejection contains a rejection of dependent claims 28 and 29
under the second paragraph of 35 U.S.C. § 112. It does not appear to be repeated in the answer
and no formal withdrawal statement is made by the examiner if it has been withdrawn. On the
other hand, appellants’ reply brief reflects at page 15 an understanding that the rejection is still
active in the appeal.
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