Appeal No. 1999-1987 Page 31
Application No. 08/400,129
Claim 26
We now turn to the rejection of claim 26. However, for
reasons stated infra in our new rejection under the second
paragraph of Section 112 entered under the provisions of 37 CFR
1.196(b), no reasonably definite meaning can be ascribed to
certain language appearing in the claim. As the court in In re
Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)
stated:
[a]ll words in a claim must be considered in judging the
patentability of that claim against the prior art. If no
reasonably definite meaning can be ascribed to certain
terms in the claim, the subject matter does not become
obvious --the claim becomes indefinite.
In comparing the claimed subject matter with the applied
prior art, it is apparent to us that considerable speculations
and assumptions are necessary in order to determine what in
fact is being claimed. Since a rejection based on prior art
cannot be based on speculations and assumptions, see In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962), we
are constrained to reverse, pro forma, the examiner's
rejection of claim 26 under
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