Appeal No. 1999-0621
Application 08/378,376
We shall not sustain, however, the standing 35 U.S.C.
§ 103(a) rejections of claims 23 through 27, 30 and 31.
Given the indefinite scope of these claims, the prior art
rejections must fall since they are necessarily based on
speculative assumption as to the meaning of the claims. See
In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA
1962). It should be understood, however, that our decision in
this regard is based solely on the indefiniteness of the
claimed subject matter, and does not reflect on the adequacy
of the prior art evidence applied in support of the
rejections.
Finally, upon return of the application to the technology
center, the examiner should reconsider:
i) the allowability of product-by-process claim 21 in
view of the prior art of record, keeping in mind the principle
that it is the patentability of the product claimed and not of
the recited process steps which is dispositive (see In re
Thorpe,
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