Appeal No. 1998-0046 Page 10
Application No. 08/357,320
and assumptions are necessary in order to determine what in
fact is being claimed. Specifically, as discussed above, this
would require speculation as to the meaning of "substantially
parallel" as used in the claims (note brief, pages 4 and 6).
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 1
through 6, 9 and 10 under 35 U.S.C. §§ 102(b) and 103. We
hasten to add that this is a procedural reversal rather than
one based upon the merits of the rejections under 35 U.S.C. §§
102(b) and 103.
NEW GROUNDS OF REJECTION
Under the provisions of 37 CFR § 1.196(b), we enter the
following new grounds of rejection:
Claims 1 through 6, 9 and 10 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the invention, for
the reasons explained above and incorporated herein.
As set forth previously, our review of the specification
leads us to conclude that one of ordinary skill in the art
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