Appeal No. 96-0656
Application 08/099,277
With respect to claims 12-18, we do not comment on the art rejection as it applies
to claims 12-18 because we do not find the claims sufficiently definite to formulate an
opinion as discussed in the new grounds of rejection under 37 CFR § 1.196(b)
below.
NEW GROUNDS OF REJECTION
Under the provisions of 37 CFR § 1.196(b), we enter the following new grounds of
rejection.
We emphasize here that claim 12 contains unclear language which renders the
subject matter thereof indefinite for the reasons stated below 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 claims 12 -18 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 limitation in claim 12.
This being the case, we are therefore constrained to reverse the examiner's
rejection of claims 12 -18 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 procedural ground relating to the indefiniteness of these
claims and therefore is not a reversal based on the merits of the rejection of claims
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