Ex parte LOO et al. - Page 9




                    Appeal No. 95-4714                                                                                                                                     
                    Application No. 08/046,476                                                                                                                             


                    completed.          3                                                                                                                                  
                              For the foregoing reasons, claim 13 is indefinite and in                                                                                     
                    violation of the second paragraph of § 112.  Furthermore, because                                                                                      
                    the "disposed within the kernel" limitation was not present in                                                                                         
                    the application as filed, claim 13 also violates the written                                                                                           
                    description requirement of the first paragraph of § 112.                                                                                               
                    Dependent claim 14 does not cure these violations and is                                                                                               
                    therefore rejected for the same reasons.                                                                                                               
                              Inasmuch as claims 13 and 14 are indefinite, it is not                                                                                       
                    possible to apply the prior art to these claims in deciding                                                                                            
                    patentability without disregarding portions of the express                                                                                             
                    wording of the claims and thus resorting to speculation and                                                                                            
                    conjecture as to the particular invention defined therein.  For                                                                                        
                    this reason, we will not sustain the examiner's § 103 rejection                                                                                        
                    of these claims based on Stiffler.  See In re Steele, 305 F.2d                                                                                         
                    859, 862-63, 134 USPQ 292, 295 (CCPA 1962).                                                                                                            
                              Nevertheless, we have considered Stiffler to determine the                                                                                   
                    extent to which it satisfies the claim limitations other than                                                                                          
                    those in the indefinite paragraph and conclude that it does.                                                                                           
                    Beginning with the preamble, Stiffler discloses a computer system                                                                                      

                              3 Also, there is no antecedent basis for "said main                                                                                          
                    memory."                                                                                                                                               
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