Appeal No. 2001-1482
Application No. 08/879,392
§ 102(b) and § 103, we emphasize again that these claims contain unclear language
which renders the subject matter thereof indefinite for reasons stated supra as part of
our new ground of rejection under 35 U.S.C. § 112, second paragraph. Accordingly, we
find that it is not possible to apply the prior art relied upon by the examiner to these
claims in deciding the question of either anticipation under 35 U.S.C. § 102(b) or
obviousness under 35 U.S.C. § 103 without resorting to considerable speculation and
conjecture as to the meaning of the questioned limitations in the claims. This being the
case, we are therefore constrained to reverse the examiner's rejections of the claims on
appeal both under 35 U.S.C. § 102(b) and 35 U.S.C. § 103 in light of the holding in In re
Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962). We hasten to add that this
reversal of the examiner's rejections is not based on the merits of the rejections, but
only on grounds relating to the indefiniteness of the appealed claims.
In summary, the examiner's rejections of the appealed claims under both 35
U.S.C. § 102(b) and 35 U.S.C. § 103 have been reversed for technical reasons. New
rejections of claims 2 through 11, 13 through 15 and 18 through 22 under 35 U.S.C.
§ 112, second paragraph, and 35 U.S.C. § 112, first paragraph, have been added
pursuant to 37 CFR § 1.196(b).
The decision of the examiner, accordingly, is reversed.
This decision contains new grounds of rejection pursuant to 37 CFR § 1.196(b).
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007