Appeal No. 1998-3232 Page 11
Application No. 08/738,920
stated supra in our new rejection under the second paragraph
of 35 U.S.C. § 112
entered under the provisions of 37 CFR 1.196(b), no reasonably
definite meaning can be ascribed to certain language appearing
in the claims. As the court in In re Wilson, 424 F.2d 1382,
1385, 165 USPQ 494, 496 (CCPA 1970) stated:
[a]ll 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.
In comparing the claimed subject matter with the applied
prior art, it is apparent to us that considerable speculations
and assumptions are necessary in order to determine what in
fact is being claimed. Since a rejection based on prior art
cannot be based on speculations and assumptions, see In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962), we
are constrained to reverse, pro forma, the examiner's
rejection of claims 2, 4-17, 19 and 20 under 35 U.S.C. § 103.
We hasten to add that this is a procedural reversal rather
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