Appeal No. 1999-1758
Application No. 08/787,971
In regards to the rejection of claims 1-4, 8 and 10 under
35 U.S.C. § 103 as being obvious over Durfee in view of Nimtz
and Periolat and the rejection of claims 5-7 under 35 U.S.C. §
103 as being obvious over Durfee in view of Nimtz and Periolat
and further in view of Nishimura. We emphasis again that
these claims contain unclear language which renders the
subject matter thereof indefinite for reasons stated supra as
part of the rejection of claims 1-8 and 10 under 35 U.S.C. §
112, second paragraph. Accordingly, we find that it is not
possible to apply the prior art relied upon by the examiner to
these claims in deciding the question of obviousness under 35
U.S.C. § 103 without resorting to considerable speculation and
conjecture as to the meaning of the questioned configuration
to releasably engage and grip at least two adjacent or two
opposing surfaces of a jaw of a beam clamp in the claims.
This being the case, we are constrained to reverse the
examiner’s rejection of claims 1-4, 8 and 10 under 35 U.S.C. §
103 in light of the holding in In re Steele, 305 F.2d 859,
862-63, 134 USPQ 292, 295 (CCPA 1962) and In re Wilson, 424
F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). We hasten to
add that this reversal of the examiner’s rejection is not
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