Appeal No. 2000-0431 Page 9
Application No. 08/789,127
A rejection under 35 U.S.C. 103(a) should not be based on
"speculations and assumptions." In re Steele, 305 F.2d 859, 862,
134 USPQ 292, 295 (CCPA 1962). "All 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 re Wilson, 424 F.2d
1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
Here, speculations and assumptions would be required to
decide the meaning of the terms employed in claims 8-10, 22-25,
and 29-32 and the scope of the claims. Therefore, we reverse pro
forma the rejection of the claims 16-19 as obvious. We emphasize
that our reversal is based on procedure rather than on the merits
of the obviousness rejection. The reversal does not mean that we
consider the claims to be patentable vel non as presently
drafted.
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