Appeal No. 1998-1669
Application No. 08/508,563
The predecessor of our reviewing court stated in In re
Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970) as
follows:
All words in a claim must be considered in judging
the patentability of that claim against the prior
art. If no reasonably definite meaning can be
ascribed to certain terms in the claim, the subject
matter does not become obvious -- the claim becomes
indefinite.
Since interpreting appealed claim 1 would require us to
engage in speculation as to the meaning of terms and
assumptions as to the scope of the claim, we cannot properly
determine whether the claimed invention encompassed by claims
1 through 13 on appeal is in fact unpatentable over the
applied prior art. Accordingly, we are constrained to reverse
the examiner’s rejection of claims 1 through 13 under 35
U.S.C. § 103 as unpatentable over Mueller or JP ‘746 in view
of Nakamura or Ohno. In re Steele, 305 F.2d 859, 862-63, 134
USPQ 292, 295 (CCPA 1962).
Pursuant to 37 CFR 1.196(b), we enter the following new
grounds of rejection:
Claims 1 through 13 are rejected under the second
paragraph of 35 U.S.C. § 112 for failing to particularly point
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