Appeal No. 95-4336
Application 08/057,898
First Rejection Under 37 CFR 1.196(b)
Pursuant to 37 CFR 1.196(b), claim 16 is rejected for
failure to comply with the second paragraph of 35 USC § 112.
The claim is indefinite, in that "said magnet means" in lines
8, 10,
11 and 13 to 15 has no antecedent basis. The antecedent of
this term evidently was intended to be "a magnetic means" in
line 6, but "magnetic" and "magnet", besides being different
terms, are not of the same scope.
The Final Rejection
Where, as here, a claim is indefinite, it should not be
rejected as unpatentable over prior art if it is necessary to
engage in considerable speculation as to the meaning of terms
in the claim and assumptions as to its scope. In re Steele,
305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). However, in
the present case we will, in the interest of avoiding possible
piecemeal appellate review, interpret the claim in accordance
with appellants' perceived intent in order to determine the
applicability of the prior art thereto.
In their brief (page 7) and reply brief (pages 2 to 4),
3
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