Ex parte MARTIN - Page 6




                 Appeal No. 1999-1057                                                                                                                   
                 Application No. 08/848,719                                                                                                             


                 disclosure.   Further, when the referenced language of each4                                                                                                                  
                 claim is read in light of the overall disclosure, we conclude                                                                          
                 that a reasonably definite meaning therefor cannot be                                                                                  
                 ascertained.  As such, it is our view that these recitations                                                                           
                 render the claimed subject matter indefinite under 35 U.S.C.                                                                          
                 112, second paragraph.  We enter a NEW GROUND OF REJECTION,                                                                            
                 infra, addressing this matter.                                                                                                         


                          To assess the noted indefinite claimed subject matter                                                                         
                 relative to the prior art applied in the examiner's respective                                                                         
                 rejections under 35 U.S.C.  102(b) and 35 U.S.C.  103(a)                                                                             
                 would require considerable speculation and assumptions on our                                                                          
                 part as to what in fact is being claimed.  Since rejections on                                                                         
                 prior art cannot be based on speculation and assumptions, we                                                                           
                 are constrained to procedurally reverse each of the examiner's                                                                         
                 rejections on appeal.  See In re Steele, 305 F.2d 859, 862-63,                                                                         
                 134 USPQ 292, 295-96 (CCPA 1962) and In re Wilson, 424 F.2d                                                                            
                 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)).  Being a                                                                                   

                          4The Martin declaration of February 27, 1998 uses the                                                                         
                 language "form fitting" and "force fitting" (paragraph 8),                                                                             
                 "form-locking" and "force-locking" (paragraph 13), and "form-                                                                          
                 locking and/or force-locking" (paragraph 14).                                                                                          
                                                                           6                                                                            





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