Appeal No. 1998-1850
Application No. 08/596,613
9.) Since we are unconvinced of error in the examiner’s rejection of claim 1, appellants
have not shown any of the rejections of these additional claims to be in error. We sustain
the section 103 rejection of claims 1, 2, 5, 6, 8, 10, 11, 13, 14, 44, and 45 as being
unpatentable over Havemann and Tsunohara. Further, we sustain the section 103
rejection of claim 12 over Havemann, Tsunohara, and Sheng. Finally, we sustain the
section 103 rejection of claims 3, 4, 9, and 42 over Havemann, Tsunohara, and the APA.
However, because we consider the scope of claims 15-18, 22-24, 40 and 41 to be
indefinite, we reverse, pro forma, the section 103 rejections of those claims. We reverse
for the reason that rejections of claims over prior art should not be based on speculation as
to the meaning of terms employed and assumptions as to the scope of the claims. In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). We enter a new ground of
rejection against the claims under 37 CFR § 1.196(b), infra.
We also note, however, that the rejection of claims 22-24 and 40 over Havemann
and Tsunohara, and the rejection of claim 41 over Havemann, Tsunohara, and the APA,
appear defective on their face. Each of the claims depends, directly or indirectly, from
claim 16. The examiner relies on the disclosure of Doan, in addition to Havemann and
Tsunohara, to allege unpatentability of the subject matter of claims 15 and 16. Thus, it is
apparent that Doan must be added to the combination of Havemann and Tsunohara for a
proper showing of unpatentability of claims depending from claim 16.
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