Appeal No. 97-0943 Page 10
Application No. 08/232,502
In comparing the claimed subject matter with the applied
prior art, it is apparent to us that considerable speculation
and assumptions are necessary in order to determine what in
fact is being claimed. Since a rejection based on prior art
cannot be based on speculation and assumptions, see In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962), we
are constrained to reverse, pro forma, the examiner's
rejection of claims 1, 2, 5 through 7, 9, 10 and 33 through 35
under 35 U.S.C. § 103. We hasten to add that this is a
procedural reversal rather than one based upon the merits of
the section 103 rejection.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 2, 5 through 7, 9, 10 and 33 through 35 under 35
U.S.C. § 103 is reversed and the decision of the examiner to
reject claims 1, 2, 5 through 7, 9, 10 and 33 through 35 under
35 U.S.C. § 112, second paragraph is affirmed, with the
affirmance constituting a new ground of rejection under 37 CFR
§ 1.196(b).
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