Appeal No. 2001-1372 Page 7
Application No. 08/018,841
As appellants have not contested the examiner’s observations with regard to the
lack of antecedent basis for “said indexing device on said insert” in claim 486 and “said
launcher” in claim 55, and the redundancy of the language of claim 49 with language in
claim 46 from which claim 49 indirectly depends, we shall sustain the examiner’s
indefiniteness rejection of claims 48-50 and 55-58 on these bases as well.
In summary, the examiner’s rejection of claims 30, 31, 33, 34, 37-39, 46-53 and
55-58 under the second paragraph of 35 U.S.C. § 112 is sustained.
The Prior Art Rejections
In light of our determination, supra, that claims 30, 31, 33, 34, 37-39 and 51-53
are indefinite, any consideration of the patentability of these claims under 35 U.S.C.
§ 102 or 103 would necessarily require speculation as to the meaning of the claims.
Rejections under 35 U.S.C. § 102 or 103 should not be based upon "considerable
speculation as to the meaning of the terms employed and assumptions as to the scope
of the claims." In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962).
When no reasonably definite meaning can be ascribed to certain terms in a claim, the
subject matter does not become obvious, but rather the claim becomes indefinite. In re
Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Accordingly, we are
constrained to reverse the rejections of these claims as being anticipated by or
6 The “accompanying Amendment” referred to on page 6 of the brief has not been entered and
thus cannot cure the defect noted by the examiner.
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