Appeal No. 2000-0588 Page 6
Application No. 08/824,110
from irregular or different preselected time intervals. Rather, according to appellants’
specification, timing signals at random intervals are produced by a “random number
generator or other suitable means.”
Sirota discloses a babysitter toy designed to help a child fall asleep, having time-
setting devices 2-5 which are adjustable such that the times at which the toy is actuated
to check for noise or movement by the child and play a recorded message, turn on a
light or display a fairy tale can be set by the user. As such, the Sirota toy permits
programming by the user to generate timing signals at intervals which may be arbitrarily
set by the user to be irregular (different), but those intervals are preselected and, thus,
are not “random” as that term is used by appellants. We thus conclude that the Sirota
structure and operation relied upon by the examiner on pages 4-5 of the answer does
not in fact respond to the means or step for generating a random timing signal as set
forth in claims 21 and 22. Accordingly, we shall not sustain the examiner’s rejection of
these claims as being anticipated by Sirota.4
4 We recognize the inconsistency implicit in our holding that claim 22 is rejectable under 35 U.S.C.
§ 112, second paragraph, as failing to particularly point out and distinctly claim the invention with a
determination under 35 U.S.C. § 102. Normally, when substantial confusion exists as to the interpretation
of a claim and no reasonably definite meaning can be ascribed to the terms in a claim, a determination as
to patentability under 35 U.S.C. § 102 is not made. See In re Steele, 305 F.2d 859, 862, 134 USPQ 292,
295 (CCPA 1962) and In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). However, in
that we are able to determine, for the reasons discussed supra, that the examiner has not set forth a
prima facie case of anticipation of this claim, without speculating as to the meaning of the problematic
claim language addressed in the new ground of rejection, in this instance, we consider it to be desirable to
avoid the inefficiency of piecemeal appellate review. See Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App.
1984).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007