Appeal No. 1996-3903 Page 6
Application No. 08/305,225
35 U.S.C. § 103
CLAIMS 33-42
Considering now the rejections of claims 33-42 under 35 U.S.C. § 103, we have
carefully considered the subject matter defined by these claims. However, for reasons
stated supra with respect to the rejection under the second paragraph of Section 112, no
reasonably definite meaning can be ascribed to certain language appearing in the claims.
As the court in In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)
stated:
All words in a claim must be considered in judging the patentability of that claim
against the prior art. If no reasonably definite meaning can be ascribed to certain
terms in the claim, the subject matter does not become obvious --the claim
becomes indefinite.
In comparing the claimed subject matter with the applied prior art, it is apparent to
us that considerable speculations and assumptions are necessary in order to determine
what in fact is being claimed. Since a rejection based on prior art cannot be based on
speculations and assumptions, see In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295
(CCPA 1962), we are constrained to reverse, pro forma, the examiner's rejections of
claims 33-42 under 35 U.S.C. § 103. While we might
speculate as to what is meant by the claim language, our uncertainty provides us with no
proper basis for making the comparison between that which is claimed and the prior art as
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