Appeal No. 96-3615
Application 08/237,567
based on Alonso and either Fan or Fischer cannot be sustained.
Claims 13-15 depend from canceled claim 12. For this
reason, their scope is indeterminate. While we might
speculate, as urged by appellant and as apparently done by 7
the examiner , on precisely what subject matter is covered by8
claims 13-15, we are reluctant to do so in light of the
guidance in such matters provided by a predecessor of our
court of review. In re Steele, 305 F.2d 859, 862, 134 USPQ
292, 295 (CCPA 1962) (“Our analysis of the claims indicates
that considerable . . . assumptions as to the scope of such
claims were made by the examiner and the board. We do not
think a rejection under 35 U.S.C. 103 should be based on such
speculation and assumption.”); In re Wilson, 424 F.2d 1382,
1385, 165 USPQ 494, 496 (CCPA 1970) (“If no reasonably
definite meaning can be ascribed to certain terms of the
claim, the subject matter does not become obvious - the claim
becomes indefinite.”). As a result, we are constrained to
reverse the examiner’s rejections of claims 13-15 under 35
7See the paragraph spanning pages 23 and 24 of the
brief.
8See page 3 of the answer.
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