Appeal 2006-3366
Application 10/864,041
Considering the rejections of independent claim 19 under 35 U.S.C.
§ 103(a), we have carefully considered the subject matter defined by these
claims. However, for reasons stated supra in our new rejection under the
second paragraph of Section 112 entered under the provisions of 37 C.F.R.
§ 41.50(b), no reasonably definite meaning can be ascribed to certain
language appearing in the claims. As the court in In re Wilson, 424 F.2d
1382, 1385, 165 USPQ 494, 496 (CCPA 1970) stated:
All words in a claim must be considered in judging the patentability of
that claim against the prior art. If no reasonably definite meaning can
be ascribed to certain terms in the claim, the subject matter does not
become obvious --the claim becomes indefinite.
In comparing the claimed subject matter with the applied prior art, it
is apparent to us that considerable speculations and assumptions are
necessary in order to determine what in fact is being claimed. Since a
rejection based on prior art cannot be based on speculations and
assumptions, see In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295
(CCPA 1962), we are constrained to reverse, pro forma, the examiner's
rejections of claim 19 under 35 U.S.C. § 103(a). We hasten to add that this
is a procedural reversal rather than one based upon the merits of the section
103 rejection. Additionally, we note that we find the Examiner’s
presentation of a rejection to the merits of independent claim 19 to be
seriously lacking in the Answer at pages 6-7 and 20-22 as to a required
showing under 35 U.S.C. § 103(a). Therefore, we will not sustain the
rejection of independent claim 19 due to a lack of a presentation of a prima
facie case of obviousness.
With respect to dependent claim 10, Appellant’s main contention is
that the teachings of Tsuya do not remedy the deficiencies noted above with
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