Appeal No. 1998-2847 Page 12
Application No. 08/521,873
The anticipation rejection
We will not sustain the rejection of claims 1, 2, 12, 14
to 16, 27, 29, 38 and 40 to 42 under 35 U.S.C. § 102(b).
We emphasize again here that claims under appeal contain
unclear language which renders the subject matter thereof
indefinite for the reasons stated supra as part of our new
rejection under 35 U.S.C. § 112, second paragraph. We find
that it is not possible to apply the prior art to the claims
under appeal in deciding the question of anticipation under
35 U.S.C. § 102(b) without resorting to speculation and
conjecture as to the meaning of claims 1 and 27. This being
the case, we are therefore constrained to reverse the
examiner's rejection of claims 1, 2, 12, 14 to 16, 27, 29, 38
and 40 to 42 under 35 U.S.C. § 102(b) in light of the holding
in In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA
1962). This reversal of the examiner's rejection is based
only on the procedural ground relating to the indefiniteness
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007