Appeal No. 97-4252 Page 8
Application No. 08/226,520
Claims 15 and 17
While we might speculate as to what is meant by the claim
language, our uncertainty provides us with no proper basis for
making the enablement determination that we are obliged to do.
Enablement rejections under 35 U.S.C. § 112, first paragraph,
should not be based upon considerable speculation as to the
meaning of the terms employed and assumptions as to the scope
of the claims. See In re Moore, supra. Cf. In re Wilson, 424
F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970) and In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). In
that regard, we note that claims 15 and 17 add to parent claim
1 details as to the structure of the lighting control means.
However, such details are confusing to us in that the
structure recited in claims 15 and 17 appears to be better
characterized as being the "self-contained detection means" of
claim 1 rather than the "lighting control means" of claim 1.
We are sufficiently unsure as to the scope of claims 15 and 17
that we consider it appropriate to reverse, pro forma, the
examiner's rejection of claims 15 and 17 under 35 U.S.C. §
112, first paragraph.
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