Appeal No. 1999-2086
Application 08/692,062
respect to the other screw. This being the case, we cannot agree that the examiner has made
out a prima facie case of obviousness with respect to claims 1, 2, 4, 5 and 41. Likewise, the
examiner has not made out a prima facie case of obviousness with
respect to claim 6, inasmuch as the Lee patent does not rectify the shortcomings of Stiltz and
Coope. Accordingly, we must reverse the § 103 rejections of claims 1, 2, 4 through 6 and 41.
Unlike claims 1 and 6, claim 34 contains certain limitations which are vague and
indefinite as discussed infra. As a result, we are unable to apply the prior art to claim 34 without
resorting to speculation and conjecture as to what appellants intended to claim as their
invention. Accordingly, we are constrained to reverse the § 103 rejection of claims 34, 35 and
37 through 39 in light of the holdings in In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295
(CCPA 1962) and In re Wilson, 424 F.2d 1382, 1384, 165 USPQ 494, 496 (CCPA 1970).
It should be understood that our reversal of the § 103 rejection of claims 34, 35 and 37 through
39 is not a reversal on the merits of the art rejection, but instead is a procedural reversal
predicated upon the indefiniteness of the language in claim 34.
Under the provisions of 37 CFR § 1.196(b), the following new ground of rejection is
entered against claims 34 through 40:1
1Although claims 36 and 40 were not involved in the instant appeal, they are nevertheless
subject to rejection under 37 CFR § 1.196(b) (amended effective Dec. 1, 1997).
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