Appeal No. 96-0356
Application 08/163,635
sustain this rejection as it is directed to claims 4, 5, 7, 8
and 11.
We turn next to the examiner’s rejection of claims 1 and 3
under 35 U.S.C. § 102(b) as anticipated by Sato.
We initially note that it is not our practice to review
prior art rejections of claims found to be indefinite under 35
U.S.C. § 112, second paragraph when such rejections are based on
speculation as to the meaning of the terms employed and
assumptions as to the scope of the claims. See In re Steele, 305
F.2d 859, 863, 134 USPQ 292, 295 (CCPA 1962). However, in this
case, we are reasonably certain that claim 3 should depend from
claim 1 instead of canceled claim 2 and as such we will address
the prior art rejections on the basis of this assumption in the
interest of judicial economy and to avoid piecemeal review.
In the examiner’s opinion, Sato discloses:
first roller 23; second roller (pulley for belt 24, or,
note lines 17-24 of col. 4); rotating means 36, 41-43,
46, 47, 39. Note idle position at col. 4, lines 10-16.
[Paper No. 3, page 5]
Appellants argue that Sato:
does not teach that the rotating means rotates the
second roller simultaneously with the first roller and
also enables the second roller to idle simultaneously
with the first roller rotating in the first direction
... Furthermore, there is no teaching that the
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