Appeal No. 96-4137
Application 08/260,674
U.S.C. § 103 as being unpatentable over (1) Turner in view of
Quinton, Bougher, Greenbaum, the French Patent and Cone and
(2) Turner in view of Quinton, Bougher, Greenbaum, the French
Patent and Giambrone. We have sustained the examiner’s
rejection of claim 23 under 35 U.S.C. § 112, second paragraph,
because in our view it is uncertain what is meant by the term
“average.” While we might speculate as to what is meant by
the claim language, uncertainty does not provide a proper
basis for making the comparison between that which is claimed
and the prior art, as we are obligated to do. Rejections
under on 35 U.S.C. § 103 should not be based upon
“considerable speculation as to the meaning of the terms
employed and assumptions as to the scope of the claims.” In
re Steele, 305 F.2d at 862, 134 USPQ at 295 (CCPA 1962). When
no reasonably definite meaning can be ascribed to certain
terms in a claim, the subject matter does not become obvious,
but rather the claim becomes indefinite. In re Wilson, 424
F.2d at 1385, 165 USPQ at 496 (CCPA 1970). Accordingly, we
are constrained to reverse the examiner’s rejections of claim
23 under 35 U.S.C. § 103. We hasten to add that this reversal
is not based upon any evaluation of the merits thereof and
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