Appeal No. 1998-2287
Application No. 08/211,157
Since one skilled in the relevant art would not be able
to ascertain with a reasonable degree of certainty as to what
would be covered by the language used in the appealed claims,
it is not appropriate for us to decide whether the examiner
correctly applied the prior art to the appealed claims. To do
so would require us to engage in unwarranted speculation as to
the meanings of terms and assumptions as to the scope of the
appealed claims. In this regard, the predecessor of our
reviewing court explained 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.
Because the process of interpreting the appealed claims
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 the appealed claims is in fact unpatentable over applied
prior art. For these reasons, we reverse the examiner’s
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