Appeal No. 1999-1455
Application 08/753,556
We also reverse pro forma the rejection of claims 7 through 10 under 35 U.S.C. §
103. Our detailed study of the disclosed and claimed invention as well as the positions of
the appellants and the examiner since the entry into the file of claims
7 through 10, leads us to conclude that the actual subject matter is so subject to conflicting
views that the subject matter of the claims on appeal is indefinite and subject to
speculation. Our pro forma reversal of the rejection of claims 7 through 10 under
35 U.S.C. § 103 should not be construed as a reversal of this rejection on the merits.
We reverse the outstanding rejection under 35 U.S.C. 103 because the subject
matter encompassed by the claims on appeal must be reasonably understood without
resort to speculation. Presently, speculation and conjecture must be utilized by us and by
the artisan inasmuch as the claims on appeal do not adequately reflect what the disclosed
invention is. Note In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962).
Note also In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
Speculation and conjecture must be exercised by us and by the artisan in
determining the true scope of meaning of the term “segments” in the claim and particularly
the recitation of them as being “parallel.” The brief description of Figure 2 at the bottom of
page 2 of the disclosed invention states that this figure “shows a second resolution grid
whereby the transistor is split into two narrower segments connected in parallel.” The
Figure 3 brief description below it at lines 29 and 30 indicates that each such segment has
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