Appeal No. 98-1253
Application No. 08/249,931
Vogel which would fairly suggest combining their teachings in
such a manner so as to arrive at the claimed invention as the
examiner has proposed. Accordingly, we will not sustain the
rejection of claims 1, 7-9, 11-15 and 17 under 35 U.S.C. §
103 based on the combined teachings of Scowen and Vogel.
Turning to the rejections of claims 10 and 16 under 35
U.S.C. § 102(b) as being anticipated by Otani and under 35
U.S.C. § 103 as being unpatentable over Scowen in view of
Vogel, we have carefully considered the subject matter
defined by these claims. However, for reasons stated infra in
our new rejection of claims 10 and 16 under 35 U.S.C. § 112,
second paragraph, as being indefinite, no reasonably definite
meaning can be ascribed to certain language appearing in
these claims. 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 on
prior art cannot be based on speculations and assumptions
(see In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96
9
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007