Appeal No. 1999-2433
Application No. 08/862,361
examiner to these claims in deciding the question of
anticipation under 35
U.S.C. § 102 or obviousness under § 103 without resorting to
considerable speculation and conjecture as to the meaning of
the questioned limitation regarding the “average uniform
opacity” in independent claim 37 and in dependent claim 17,
particularly since appellants’ specification provides no
guidance as to exactly what this terminology is to mean. This
being the case, we are constrained to reverse the examiner's
rejections of appealed claims 17 through 22, 30 through 32, 35
and 37 through 39 in light of the holding in In re Steele,...
134 USPQ 292 (CCPA 1962). We hasten to add that this reversal
of the examiner's rejections is not based on the merits of the
rejections, but on technical grounds relating to the
indefiniteness of the appealed claims.
Our action above leaves for our consideration in this
appeal the rejection of claims 23 through 28 and 34 under 35
U.S.C.
§ 103 based on Melling, and of claim 33 under 35 U.S.C. § 103
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