Appeal No. 1999-1606
Application No. 08/968,384
argument by appellants that the recitation of “a single, arbitrary code word” in the instant claims
distinguishes over the applied references.
We will summarily reverse the rejection of claims 6-13 under 35 U.S.C. 103 because we simply do
not understand what appellants intend by the claimed “single, arbitrary code word” even though
appellants’ main argument stresses this limitation as a distinguishing feature of the invention. One cannot
apply art in a rejection under 35 U.S.C. 103 if claim interpretation is confusing under 35 U.S.C. 112.
In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962). Our reversal of the
rejection based on 35 U.S.C. 103 should not be considered as a commentary on the substance, or
merits, of the examiner’s rejection. We simply cannot make a substantive decision regarding
obviousness based on speculation when certain claim language is confusing.
We make the following new grounds of rejection in accordance with 37 CFR 1.196(b).
Claims 6-13 are rejected under 35 U.S.C. 112, second paragraph, as failing to particularly point out
and distinctly claim the invention. The phrase, “single, arbitrary code word” is not clearly understood.
It is not clear whether a “single” code word means one bit, or 8 bits, which is normally considered a
“word,” in computer jargon. Or, perhaps, any length of code is acceptable as long as it comprises only
one, or a single, code. We are unsure and the specification fails to explain what is meant by a “single”
code word. Similarly, the specification fails to explain what is meant by an “arbitrary” code word.
Wouldn’t a code word be specific to the type of display panel or the type of interface to which it is
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