Appeal No. 2000-0588 Page 7
Application No. 08/824,110
For the reasons expressed below in the new ground of rejection, claims 19 and
20 are indefinite. Therefore, the prior art rejection of these claims cannot be sustained
because it is necessarily based on speculative assumption as to the meaning of the
claims. See Steele, 305 F.2d at 862-63, 134 USPQ at 295. It should be understood,
however, that our decision in this regard is based solely on the indefiniteness of the
claimed subject matter, and does not reflect on the adequacy of the prior art evidence
applied in support of the rejection.
Turning now to the examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 103
as being unpatentable over Sirota in view of Hughes, the examiner appears to concede
that Sirota lacks a message timer “generating a random timing signal,” as called for in
claim 1, and hence claim 2 which depends from claim 1. To overcome this deficiency,
the examiner relies upon the teaching in Hughes of a random number generator for a
suggestion to provide a random number generator in Sirota, “in order to initiate output
at any time, not just those times that are preprogrammed” (final rejection, page 3).
We find no suggestion, in Hughes’ teaching (column 6, lines 6-9) of using a
random number generator to assign an ID number to the parent unit of a child proximity
detector system, to use a random number generator in the Sirota device to generate
random timing signals. From our perspective, the only suggestion for modifying Sirota
in the manner proposed by the examiner is found in the luxury of hindsight accorded
one who first viewed the appellants' disclosure. This, of course, is not a proper basis
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