Appeal No. 97-4182
Application 08/429,150
we will not sustain the rejection of claim 1 under 35 U.S.C.
§ 103 based on the combined teachings of the British patent and
Hibbert.
Considering last the rejection of claim 2 under 35 U.S.C.
§ 103 as being unpatentable over the British patent in view of
Hibbert, for the reasons set forth above with respect to the
rejection of this claim under the second paragraph of § 112, we
are of the opinion that no reasonably definite meaning can be
ascribed to certain language appearing in this claim. In
comparing the subject matter defined by claim 2 with the applied
prior art, it is apparent to us that considerable speculations
and assumptions are necessary in order to determine what in fact
is being claimed. Since a rejection on prior art cannot be based
on speculations and assumptions (see In re Steele, 305 F.2d 859,
862-63, 134 USPQ 292, 295-96 (CCPA 1962) and In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)), we are con-
strained to reverse the examiner's rejection of claim 2 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 § 103
rejection.
The rejection of claim 1 under 35 U.S.C. § 112, second
paragraph, is reversed.
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