Appeal No. 1996-2966
Application No. 08/257,232
claimed invention. The legal standard for definiteness is
whether a claim reasonably apprises those of ordinary skill in
the art of its scope. In re Warmerdam, 33 F.3d 1354, 1361, 31
USPQ2d 1754, 1759 (Fed. Cir. 1994). We are unable to
ascertain the scope of the invention as set forth in claims 1
and 11 in view of the failure of the claims to establish a
meaning for the resetting step. Since the scope of these
claims is not clear, a rejection of independent claims 1 and
11 under the second paragraph of 35 U.S.C. § 112 is
appropriate. Since dependent claims 2-10 and 12-20
incorporate the indefiniteness of claims 1 and 11, all the
claims are subject to the new ground of rejection under the
second paragraph of 35 U.S.C. § 112.
We now consider the examiner’s rejections of the
claims under 35 U.S.C. § 103. As a general rule, prior art
rejections cannot be made where the claimed invention can only
be based upon speculation and conjecture as to what is being
claimed.
In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA
1962). Since we have just determined that the scope of the
claimed invention is indefinite and subject to conjecture, a
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