Appeal No. 96-3090 Page 6
Application 08/287,409
[A]s interpreted in light of the specification and
the rest of claim 44, the recited "sub-assembly"
must clearly include the following elements: (i) the
mechanical switch inherently associated with the
switch lever SL of Fig. 1 (which mechanical switch
provides for connection with the "pair of terminals"
recited in line 3 of claim 44, which "pair of
terminals" must inherently be present "at the
location of an ordinary wall switch"); (ii) face
plate FP of Fig. 1; and (iii) the actuator/timer
unit ATU of Figs. 2a, 2b, 3 and 5.
If the face plate is interposed between the sub-assembly and
the terminals, then how can the sub-assembly include (a) the
face plate and (b) the mechanical switch, which must be
between the face plate and the terminals in order to connect
the rest of the sub-assembly to the terminals? These
limitations are logically inconsistent. Yet if the sub-
assembly does not include the mechanical switch, we agree with
the examiner (Paper 32 at 7) that it is not clear how the sub-
assembly is connected to the terminals to turn the power on
and off. Given the uncertainty surrounding claim 44, both as
written and as argued, we conclude that we must sustain the
rejection of claims 44-49 under section 112[2] as indefinite.
We reverse all of the remaining rejections of claims 44-
49 without saying anything about the merits of these
rejections because the meaning of these claims is so uncertain
that we cannot find facts based on the language of the claims.
Cf. In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295
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