Appeal No. 1999-0090
Application 08/239,700
apprise those of skill in the art of its scope. In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d
1754, 1759 (Fed. Cir. 1994). In the present case, the appellant and the examiner seem to have treated
claims 4 to 6 as being of the same scope as claims 1 to 3, respectively, but since the language of claims
4 to 6 is different from that of claims 1 to 3, respectively, the two sets of claims are presumably
intended to be of different scope. However, particularly in light of the lack of antecedent basis in the
specification, as noted supra, we do not consider that one of ordinary skill would reasonably be able to
determine what the scope of claims 4 to 6 is intended to be. In particular, it is not clear whether claims
4 to 6 are intended to be of such scope that claim 4, for example, is intended to cover artificial cuspless
posterior teeth other than those in which the occlusal surfaces of the teeth form segments of the restored
curve of Spee (as shown in Fig. 2), and if so, what other structure is intended to be covered thereby.
Accordingly, in view of the indistinctness of the scope of claims 4 to 6, they are rejected
pursuant to 37 C.F.R. § 1.196(b) for failure to comply with the second paragraph of 35 U.S.C.
§ 112.
When the language of a claim is such that in order to reject the claim under 35 U.S.C.
§ 103 it would require considerable speculation as to the meaning of terms therein and assumptions as
to its scope, the claim should be rejected under § 112, second paragraph, not
§ 103. In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). Therefore, since such
speculation and assumptions as to claims 4 to 6 would be required for the reasons discussed above, the
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