Appeal No. 2000-1508 Page 17
Application No. 08/810,442
would have known that both paths enter the decoder 506 via a
single, physical port. Therefore, we affirm the rejection of
claim 1; of claim 2, which falls therewith; and of claim 8.
Turning to claims 3 and 10, we recall that a rejection based
on prior art should not be grounded 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 claim becomes indefinite." In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
Here, for the reasons we explained in addressing the
indefiniteness, enablement, and written description rejections,
our analysis of claims 3 and 10 leave us in a quandary about what
the claims specify. Speculations and assumptions would be
required to decide the scope of the claims. Therefore, we
reverse pro forma the rejection of claim 3 as obvious and of
claim 10 as anticipated.2
2The reversal is based on procedure rather than on the
merits of the prior art rejections. It is not to be construed as
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