Appeal No. 2001-2176
Application 09/031,186
respective positions of the appellants and the examiner with
regard to the merits of these rejections.
DISCUSSION
We shall not sustain either of the examiner’s rejections.
For the reasons expressed below, the scope of claims 1, 2 and 5
through 11 is indefinite. Accordingly, the standing prior art
rejections must fall because they are necessarily based on
speculative assumption as to the meaning of the claims. See
In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA
1962). It should be understood, however, that our decision in
this regard rests solely on the indefiniteness of the claimed
subject matter, and does not reflect on the adequacy of the prior
art evidence applied in support of the rejections.
The following rejection is entered pursuant to 37 CFR
§ 1.196(b).
Claim 1, and claims 2 and 5 through 11 which depend
therefrom, are rejected under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the
subject matter the appellants regard as the invention.
The second paragraph of 35 U.S.C. § 112 requires claims to
set out and circumscribe a particular area with a reasonable
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