Appeal No. 2001-0515
Application 08/926,358
specification. Since claim 1 is limited to a single keel, the subject matter of claim 1 and, hence,
claim 4 is not anticipated by Rambert.
With regard to the § 103 rejection of claims 1, 3, 4 and 6-8 and the § 103 rejection
of claim 5, it is not possible to apply the prior art to these claims without resorting to speculation
and conjecture as to the meaning of certain language in claim 1. Accordingly, we are
constrained to reverse the § 103 rejections of claims 1, 3 and 4-8 in light of the holding in In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962).
Under the provisions of 37 CFR § 1.196(b), the following new grounds of rejection
are entered against claims 1 and 3 through 8:
1. Claims 1 and 3 through 8 are rejected under the second paragraph of
35 U.S.C. § 112 as being indefinite for hence failing to particularly point out and distinctly claim
the subject matter which appellants regard as their invention.
2. Claims 1 and 3 through 8 are rejected under the first paragraph of 35 U.S.C. §
112 as being based on a specification which, as filed, does not satisfy the description
requirement in that paragraph.
3. Dependent claim 3 is rejected under the fourth paragraph of 35 U.S.C. § 112 as
failing to further limit parent claim 1.
With regard to our new rejection of the appealed claims under the second paragraph
of § 112, it is established patent law that the claims must define the metes and bounds of the
invention with a reasonable degree of precision. In re Venezia, 530 F.2d 956, 958, 189 USPQ
149, 151 (CCPA 1976). Moreover, the question of compliance with
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