Appeal No. 2000-0503 Page 4
Application No. 08/902,031
language (i.e., "essentially mostly") appearing in the claims. While we might speculate as to
what is meant by the claim language, our uncertainty provides us with no proper basis for
making the comparison between that which is claimed and the prior art as we are obliged to do.
Rejections under 35 U.S.C. § 103 should not be based upon "considerable speculation as to the
meaning of the terms employed and assumptions as to the scope of the claims." In re Steele,
305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). When no reasonably definite meaning
can be ascribed to certain terms in a claim, the subject matter does not become obvious, but
rather the claim becomes indefinite. In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496
(CCPA 1970). Accordingly, we are constrained to reverse, pro forma, the examiner's 35
U.S.C. § 103 rejections of independent claims 1, 58 and 70 as well as claims 47-57, 59-69 and
71-82 which depend therefrom and are likewise indefinite. We hasten to add that this is a
procedural reversal rather than one based upon the merits of the 35 U.S.C. § 103 rejections.1
Turning next to the examiner's rejection of independent claims 83, 96 and 145 under 35
U.S.C. § 103 as being unpatentable over Toth, we note, at the outset, that appellants (see brief,
We note of interest the teachings of U.S. Patent No. 4,416,384, issued November 22, 1983 to Bjurling,1
which is of record in this application, with regard to the suspension of a tank. Bjurling's disclosure of an
arrangement comprising suspension plates 8 welded to the ends of the tank which transmit substantially all of the
weight of the tank and secondary supports (saddles 5 and supports 6), wherein the tank does not come to be supported
to any appreciable extent by the saddles and supports during normal use and handling (column 2, lines 28-39, and
column 3, lines 5-16), appears particularly pertinent to the "essentially mostly suspending" limitations of these
claims.
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