Appeal No. 98-1848
Application 08/500,781
substantially constant curvature,” as called for in claim 22.5
While we might speculate as to what is meant by the claim
language discussed above, 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 such claims.” 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 obvious,
but rather the claim becomes indefinite. In re Wilson, 424
F.2d 1382, 165 USPQ 494 (CCPA 1970). Accordingly, we are
constrained to reverse the examiner’s rejections of the
appealed claims as being unpatentable over the prior art. We
hasten to add that this is a procedural reversal rather than
one based upon the merits of the rejections. We take no
position as to the pertinence of the prior art as applied by
5At oral hearing, counsel for appellant was understood
to say that the recitations of claim 15 were inconsistent with
the “whereby” clause of claim 22, and that claim 15 should be
canceled.
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