Appeal No. 95-0140
Application 08/002,528
cannot be based on speculations and assumptions (see In re
Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962)
and In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970)), we are constrained to reverse the examiner's rejection of
claim 24 under 35 U.S.C. § 103. We hasten to add that this is a
procedural reversal rather than one based upon the merits of the
§ 103 rejection.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejection.
Claim 24 is rejected under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and distinctly
claim the subject matter sought to be patented. When used in
patent claims, the transitional phrases “consisting of” and
“comprising” have special significance. That is, the
transitional phrase “consisting of” is “closed” and limits the
scope of the claim in which it is used only to those elements
expressly recited and definitely excludes therefrom any element
not specified therein. See, e.g., Ex parte Davis, 80 USPQ 448,
449 (Bd. App. 1949). On the other hand, the transitional phrase
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