Appeal No. 1998-0210
Application No. 08/149,193
specification but the “equivalents” of ribs in this art, as
ribs are defined by appellants, are not set forth and not
apparent. Thus, since the metes and bounds of the subject15
matter of claims 123 through 127, and 132 is indeterminate, we
cannot address the content of these claims relative to prior
art as in the rejection before us. It is appropriate in this
situation to reverse the rejection for procedural reasons. To
speculate on the meaning of the language in question and
consider the applied prior art would be inappropriate. See In
re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)
and In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA
1962). Accordingly, we procedurally reverse the rejection of
claims 123 through 127 under 35 U.S.C. § 103 and enter a new
ground of rejection for these claims, infra, based upon 35
U.S.C. § 112, second paragraph.
15Should there be a subsequent understanding of what may
constitute a rib equivalent thereby resolving the issue under
35 U.S.C. § 112, second paragraph, it would be encumbent upon
the examiner, if prior art is then to be applied to
appellants’ “traction means” claims, to make a specific
determination as to whether a reference teaches a rib
equivalent, if the reference fails to teach a rib. Donaldson,
29 USPQ2d at 1852.
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