Appeal No. 1999-0608 Page 8
Application No. 08/571,471
1, and claims 2 and 3 which depend therefrom, under 35 U.S.C.
§ 112, second paragraph, as set forth infra.
Next we turn to the examiner's rejection of claims 1
through 3 under 35 U.S.C. § 103 as being unpatentable over
appellant's APA in view of Matsumoto and Dan'hata. We
recognize the inconsistency implicit in our holding that
claims 1 through 3 are rejectable under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and
distinctly claim the invention with a holding that these
claims are unpatentable under 35 U.S.C. § 103. Normally, when
substantial confusion exists as to the interpretation of a
claim and no reasonably definite meaning can be ascribed to
the terms in a claim, a determination as to patentability
under 35 U.S.C. § 103 is not made. See In re Steele, 305 F.2d
859, 134 USPQ 292 (CCPA 1962) and In re Wilson, 424 F.2d 1382,
165 USPQ 494 (CCPA 1970). However, in this instance, we
consider it to be desirable to avoid the inefficiency of
piecemeal appellate review. See Ex parte Ionescu, 222 USPQ
537 (Bd. App. 1984). Therefore, in the interest of judicial
economy, we interpret "substantially polyimide" in appellant's
claim 1 as requiring a retainer formed from a material
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