Appeal 2007-0909
Application 10/881,407
Accordingly, on this record, the scope of claims 10 through 15 is so
indefinite under § 112, second paragraph, as to require speculation as to the
metes and bounds of the claimed subject matter, and thus, because the claims
cannot be analyzed to determine whether they are patentable over Keefer,
the ground of rejection over this reference cannot be supported. See, e.g., In
re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962)
(rejection over prior art cannot be based on speculation and assumptions as
to the scope of the claims).
Therefore, on this record, we reverse the ground of rejection of claims
10 through 15 under 35 U.S.C. § 102(e) over Keefer pro forma.
The Primary Examiner’s decision is reversed.
OTHER ISSUES
We decline to exercise our authority under 37 C.F.R. § 41.50(b)
(2006) and enter a new ground of rejection of claims 10 through 15, under
35 U.S.C. § 112, second paragraph, leaving this matter to the Examiner to
consider upon any further prosecution of the appealed claims subsequent to
the disposition of this appeal.
REVERSED
sld/ls
Patrick S. Yoder
Fletcher Yoder
P.O. Box 692289
Houston TX 77269-2289
5
Page: Previous 1 2 3 4 5
Last modified: September 9, 2013