Ex Parte POERSCHMANN - Page 6




             Appeal No. 2000-0510                                                                                   
             Application No. 08/792,966                                                                             


             even accepting the appellant's definition of "Kraftschlussig," the appellant's attempt to use a        
             term which has as one of its meanings or as part of its meaning the term "nonpositively" to            
             define the term "nonpositively" is of no avail.  The appellant's contention that, in the simplest      
             of terms, what "nonpositively" means in the context of the present invention is that "the              
             corresponding two parts are securely joined directly to one another (although in a preferred           
             embodiment, they may be releasably joined together, e.g., by means of a bolted connection)"            
             is simply not supported by the original disclosure of the application and is not implied even by       
             the definition of "Kraftschlussig" proffered by the appellant.                                         
                    Accordingly, we shall sustain the examiner's rejection of claims 1 through 4 under 35           
             U.S.C.  112, second paragraph, as being indefinite.                                                   
                                             The obviousness rejections                                             
                    We emphasize again here that claim 1 contains unclear language ("nonpositively")                
             which renders the subject matter thereof indefinite for the reasons stated supra.  We find that it     
             is not possible to apply the prior art to claims 1 through 4 in deciding the issues of obviousness     
             under 35 U.S.C.  103 without resorting to speculation and conjecture as to the meaning of the         
             questioned terminology in claim 1.5  This being the case, we are therefore constrained to              

             reverse the examiner's rejections of claims 1 through 4 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).  We hasten to               


                    5 This is highlighted by the nature of the appellant's arguments on pages 3-5 of the brief with regard to
             the distinctions between the applied prior art and the claimed subject matter.                         
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