Appeal No. 1999-1747 Page 15
Application No. 08/715,422
35 U.S.C. § 103 without resorting to speculation and
conjecture as to the scope of claim 1. This being the case,
we are therefore constrained to reverse the examiner's
rejection of claims 1 to 16 under 35 U.S.C. § 103 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 of these claims and therefore is not a reversal
based on the merits of the rejection.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 16 under 35 U.S.C. § 103 is reversed and a new
rejection of claims 1 to 16 under 35 U.S.C. § 112, second
paragraph, has been added pursuant to provisions of 37 CFR §
1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. Office 63, 122 (Oct. 21, 1997)). 37 CFR §
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