Appeal No. 1996-3814 Page 15
Application No. 08/348,835
for a magnetic head recited in claim 2. Thus, in my view, in
order to arrive at their interpretation of the steps in the
claimed method, as stated on page 4 of their decision, the
majority is improperly reading limitations (in this case the
presence of a magnetic head) from the specification into the
claims.
According to the majority, one skilled in the art would
understand the method described in claim 2 as evidenced by the
Figures 1-5 in the Henrich patent. In turning to the figures
relied on by the majority, I find that they are drawings of
various apparatuses, none which correspond to the description
of the substrate set forth in claim 2. Thus, it is not clear
to me, nor has the majority explained, how the referenced
figures render the method in claim 2 definite within in the
meaning of § 112.
Since I find that claim 2 fails to satisfy the
definiteness requirements of the second paragraph of § 112, it
reasonably follows that this merits panel should not reach the
examiner’s rejection under § 103. To that end, the court has
held that it is erroneous to analyze claims based on
“speculation as to the meaning of terms employed and
assumptions” as to their scope. In re Steele, 305 F.2d 859,
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