Appeal No. 96-2591
Application 07/957,106
obvious but, rather, is indefinite. In re Wilson, 424 F.2d 1382, 185 USPQ 494 (CCPA 1970). It is
improper to rely on speculative assumptions as to the meaning of a claim and reject the claim as
obvious under 35 U.S.C. § 103. In re Steele, 305 F.2d 858, 134 USPQ 292 (CCPA 1962).
In view of the indefiniteness of the claims, we will not sustain the rejection of claims 1-15 on the
basis of obviousness-type double patenting.
Our reversal of the rejections under 35 U.S.C. § 103 and under the judicially created doctrine
of obviousness-type double patenting is not a reversal on the merits of the rejection, but rather a
procedural reversal predicated on the indefiniteness of the claimed subject matter.
The following new rejection is entered pursuant to 37 C.F.R. § 1.196(b).
Claims 1-17 are rejected under 35 U.S.C. § 112, second paragraph, as failing to particularly
point out and distinctly claim the subject matter the appellants regard as the invention. This rejection is
based on the preceding analysis of the claims.
At the oral hearing before the Board on June 10, 1999, counsel for appellants represented that
appellants were agreeable to this course of action by the Board, thus enabling further prosecution
before the examiner so as to amend the claims to overcome their indefiniteness as to the term “a
numerical value of N-radix notation…” and to have the rejections under 35 U.S.C. § 103 and double
patenting reconsidered in view of the amendments.
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007