Appeal No. 95-3789 Page 14
Application No. 08/047,047
our new rejection under the second paragraph of Section 112
entered under the provisions of 37 CFR 1.196(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, 165
USPQ 494 (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 claims 15
through 22 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 section 103 rejections.
CONCLUSION
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