Appeal No. 1997-3449 Page 8
Application No. 08/424,806
Therefore, we affirm the rejection of claim 12 under 35 U.S.C.
§ 112, ¶ 2.
A rejection under 35 U.S.C. 103 should not be based on
“speculations and assumptions.” In re Steele, 305 F.2d 859,
862, 134 USPQ 292, 295 (CCPA 1962). “All 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 re
Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
For the reasons explained in addressing the
indefiniteness of claims 5 and 12, our analysis of the claims
leaves us in a quandary about what they specify. Speculations
and assumptions would be required to decide the meaning of the
terms employed in the claims and the scope of the claims.
Therefore, we reverse pro forma the rejection of claims 5 and
12 under 35 U.S.C. § 103. We emphasize that out reversal is
based on procedure rather than on the merits of the
obviousness rejections. The reversal is not to be construed
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