Appeal No. 96-4041
Application 08/264,704
any prior knowledge generally available to one of ordinary
skill in the art that would have led a person of ordinary
skill in the art to modify Trammell in the manner proposed.
For this reason, the rejections of these appealed claims must
fail for lack of a sufficient
factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
As to claim 3, for reasons stated infra in our new
rejection entered under the provisions of 37 CFR 1.196(b), we
have encountered substantial difficulty in understanding
precisely what is meant by certain language in that claim.
While we might speculate as to what is meant by the claim
language in question, our uncertainty provides us with no
proper basis for making the comparison between that which is
claimed and the prior art as we are obligated to do.
Rejections under 35 U.S.C. § 103 should not be based upon
"considerable speculation as to the meaning of terms employed
and assumptions as to the scope of the claims." In re Steele,
13
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