Appeal No. 96-3130
Application 08/225,653
to exactly which (or combination thereof) of these distinct
structural arrangements the appellants intended to encompass by
the means-plus-function clause, it might be speculated that the
appellants intended that arrangements (1) and (4) should not be
encompassed by the "means" clause inasmuch as they have been
previously set forth in claim 2. It also might be argued that
arrangement (5) should not be encompassed by the "means" clause
since no intake passage has been set forth, although this again
is at least somewhat speculative. With respect to arrangements
(2) and (3), one is left to complete speculation as to which one
(or both) of these two arrangements the appellants intend to
encompass by the "means" clause.
From the above, 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 on prior art
cannot be based on speculations and assumptions (see In re
Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962)
and In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970)), we are constrained to reverse the examiner's rejection of
claim 2 under 35 U.S.C. § 102(e). We hasten to add that this is
a procedural reversal rather than one based upon the merits of
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