Appeal No. 96-1720
Application 08/389,520
(Bd. App. 1984). In other instances, however, it may be
impossible to determine whether or not claimed subject matter
is anticipated by or would have been obvious over references
because the claims are so indefinite that considerable
speculation and assumptions would be required regarding the
meaning of terms employed in the claims with respect to the
scope of the claims. See In re Steele, 305 F.2d 859, 862, 134
USPQ 292, 295 (CCPA 1962).
For the reason discussed above, we consider appellants’
claims to be sufficiently indefinite that application of the
prior art to the claims is not possible. On this basis, we do
not sustain the rejection under 35 U.S.C. § 103. It should be
understood that this reversal is not a reversal on the merits
of the rejection but, rather, is a procedural reversal
predicated upon the indefiniteness of the claims.
We remand the application to the examiner for the
examiner and appellants to clarify the claim language and
explain their positions regarding the patentability of the
clarified claims.
DECISION
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