Appeal No. 97-3198
Application No. 08/502,408
Thus, it is our view that the metes and bounds of the
appellant’s claims cannot be determined. This is illustrated
by considering that the appellant has urged that the Gribben
arrangement displays a 50-60 percent overlap and thus does not
fall within the scope of the invention as recited in the
claims (Brief, page 6), even though such an overlap clearly
falls within the “at least partially overlap” scope of the
invention as described in the specification. How much
intermeshing of arms and gears is necessary to fall within the
scope of claim 1 is indeterminable to one of ordinary skill in
the art from the record before us.
The Examiner’s Rejections
When no definite meaning can be ascribed to certain terms
in a claim, the subject matter does not become unpatentable,
but rather the claim becomes indefinite. See In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Since it
is clear to us that considerable speculation and assumptions
are necessary to determine the metes and bounds of what is
being claimed, and since a rejection cannot be based upon
speculation and assumptions, we are constrained not to sustain
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007