Appeal No. 2000-1349
Application No. 08/475,026
of Martin to modify Giladi to meet the terms of independent
claims 1, 8 and 15 and, consequently, dependent claims 2-5,
7, 9, 10 and 16 is through hindsight based on appellant’s
teachings. Hindsight analysis, however, is clearly
improper. In re Deminski, 796 F.2d 436, 443, 230 USPQ 313,
316 (Fed. Cir. 1986).
For reasons set forth infra in our new ground of
rejection introduced under 37 CFR § 1.196(b), it is not
possible to apply the prior art to claims 5 and 17 without
resorting to speculation and conjecture as to the meaning
of certain limitations in these claims. Accordingly, we
are constrained to reverse the rejection of claim 5 based
on Giladi, Cepparo and Kishi and the rejection of claim 17
based on Giladi and Cepparo 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, however, that our
decision in this regard is based on indefiniteness of the
claimed subject matter and thus does not reflect on the
adequacy of the prior art applied in the rejection of these
claims.
introduced infra pursuant to 37 CFR § 1.196(b).
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