Appeal No. 96-4149
Application 08/276,436
While we might speculate as to the scope of the appealed
claims, our uncertainty provides us with no proper basis for
making the comparison between that which is claimed and the
prior art as we are obliged to do. Rejections based on prior
art should not be based upon considerable speculation as to
the meaning of terms employed and assumptions as to the scope
of the claims. See In re Steele, 305 F.2d 859, 862, 134 USPQ
292, 295 (CCPA 1962). When no reasonably definite meaning can
be ascribed to certain terms in a claim, the subject matter
does not become unpatentable over the prior art, but rather
the claim becomes indefinite. See In re Wilson, 424 F.2d
1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Accordingly, we
are constrained to reverse the examiner’s rejections of claims
1 to 5 and 7 as being anticipated by Daubenspeck, and claims 1
and 4 as being anticipated by Mayr. We hasten to add that
reversal of these rejections is not based on the merits of the
above-noted rejections, but rather is a procedural reversal
predicated on the indefiniteness of the claimed subject
matter.
Considering the examiner’s rejection of claims 1 to 5 and
7
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