Appeal No. 2000-0504
Application 08/799,898
for the expression “fixedly positioned mounting means.”
In view of the situation, wherein numerous claim terms
lack antecedent basis, it is our opinion that no definite
meaning can be ascribed to the claimed subject matter. When
this is true of the terms in a claim, the subject matter of
the claim cannot be considered obvious, but rather the claim
should be rejected as indefinite. See In re Wilson 424 F.2d
1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Since it is clear
to us that considerable speculation and assumption are
necessary to determine the metes and bounds of what is being
claimed, and since a rejection under 35 U.S.C. § 103 cannot be
based upon speculation and assumption, we are constrained to
reverse the examiner’s rejection of claims 11 through 17. See
In re Steele 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962).
It should be understood, however, that our reversal of the
rejection under § 103 is not a reversal on the merits of the
rejection but rather is a procedural reversal predicated upon
the indefiniteness of the claimed subject matter.
Accordingly, under the provision of 35 CFR 1.196(b) we enter
this rejection of claims 11 through 17 under 35 U.S.C. § 112
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