Appeal No. 1998-2287
Application No. 08/211,157
‘910, each in view of the appellant’s admitted prior art,
Narishige, Jahnes, and Nishimura. (Id. at pages 4-7.)
Upon consideration of the record, we determine that one
skilled in the relevant art would not be able to ascertain the
scope of the appealed claims because no reasonably definite
meaning can be ascribed to certain language appearing in these
claims when read in light of the accompanying specification.
Accordingly, we reverse the examiner’s rejections under 35
U.S.C. §§ 102(b) and 103 on procedural grounds and, pursuant 4
to 37 CFR § 1.196(b) (1997), we enter a new ground of
rejection under the second paragraph of 35 U.S.C. § 112
(1999). The reasons for our determination follow.
In rebutting the §102 rejections, the appellant argues
that “Griffith fails to teach an ‘amorphous’ permalloy film
substantially identical to” that recited in the appealed
claims. (Appeal brief, page 8.) Concerning the §103
rejection, the appellant contends as follows:
Griffith, the primary reference, merely states the
permalloy film is “amorphous”, without giving any
details as to how the film was produced or its
4We emphasize that this reversal is a technical reversal
rather than one based on the merits.
4
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