Appeal No. 1998-3026
Application No. 08/531,613
Reply Brief (Paper No. 24) for appellants’ position with respect to the claims which stand
rejected.
OPINION
The 35 U.S.C. 102 Rejections
Claims 1-4 stand rejected under 35 U.S.C. § 102 as being anticipated by either of
Chestnut or Kato. We must reverse, pro forma, the examiner’s rejection of the claims,
because we consider the scope of the claims to be indefinite. If certain claim language is
not understood, then any attempt to apply art against that claim can only be based on
speculation. 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 note, however, that the Final Rejection deems the subject matter of claims 1-4
as being “clearly anticipated” by Chestnut or Kato. Neither the Final Rejection nor the
Answer points out what the anticipatory structures in the references are believed to be,
other than the “small holes.” However, independent claim 1 recites at least a yoke, a yoke
plate, a stator coil, alignment notches, and a synthetic resin, in addition to the “small holes.”
If not for the indefinite scope of the claims, which requires the new ground of rejection, the
instant application likely would have been remanded to the examiner for the examiner to
-3-
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007