Appeal No. 97-2451 Page 11
Application No. 08/260,635
the appellant's specification fails to set forth an adequate
definition as to what is meant by that terminology.
Examiner's rejection of claims 1 and 2 under 35 U.S.C. § 103
We emphasize again here that claim 1 contains unclear
language which renders the subject matter thereof indefinite for
the reasons stated supra as part of our new rejection under
35 U.S.C. § 112, second paragraph. We find that it is not
possible to apply the prior art to claim 1 in deciding the
question of obviousness under 35 U.S.C. § 103 without resorting
to speculation and conjecture as to the meaning of the questioned
limitations in claim 1. This being the case, we are therefore
constrained to reverse the examiner's rejection of claim 1 and
claim 2 which depends therefrom under 35 U.S.C. § 103 in light of
the holding in In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295
(CCPA 1962). This reversal of the examiner's rejection is based
only on the technical grounds relating to the indefiniteness of
the claims.
CONCLUSION
To summarize, the decision of the examiner to reject claims
1 and 2 under 35 U.S.C. § 103 is reversed and a new rejection of
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