Appeal No. 96-1869
Application 08/086,494
In cases where claimed subject matter is indefinite, an
evaluation thereof relative to prior art is inappropriate.
See In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA
1970) and In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295
(CCPA 1962).
In the present case, on line 3 of each of claims 9, 10,
and 16 it is recited that an antenna system is disposed “in” a
composite door or panel. Contrary to this recitation is the
underlying disclosure of the antenna “on” the door
(specification, page 2, lines 2 and 28 and page 3, line 1),
the showing in the drawing of the antenna on the door (Figs. 1
and 2), and appellants’ express statement in the brief (page
2) that “[t]he present antenna element is external to the door
itself.” The above disparity renders the claimed subject
matter indefinite in meaning and inaccurate. It follows that
claims 9, 10, and 16 cannot be assessed relative to prior art
(35 U.S.C. § 103) since the metes and bounds thereof is
indeterminate. Thus, the rejection of these claims under 35
U.S.C. § 103 is reversed, and a new rejection is introduced,
infra.
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