Appeal No. 2001-1484
Application 09/092,368
assumptions as to the scope of such claims needs to be made. We
do not think a rejection under 35 U.S.C. 103 should be based on
such speculations and assumptions. In re Steele, 305 F.2d 859,
862, 134 USPQ 292, 295 (CCPA 1962); Ex parte Head, 214 USPQ 551
(Bd Pat App&Int 1981). Accordingly, we are reversing the
rejection under section 103 and entering a new rejection under
section 112, second paragraph. We must emphasize that this is a
technical reversal only, in the sense that claim 1 is too
indefinite for us to apply the prior art.
With regard to claims 11 and 12, we reverse the rejection of
these claims. We are in agreement with appellant that scroll-
type compressors are self unloading as appellant describes in the
reply brief. Accordingly, there would have been no suggestion or
motivation for one of ordinary skill in the compressor art to
apply the teachings of Smith to the compressor of Prenger. The
rationale of Smith of low starting torque is obviated by the
scroll-type nature of Prenger.
Pursuant to our authority under 37 CFR § 1.196(b) we enter
the following rejection:
Claims 1-10 are rejected under 35 U.S.C. § 112, second
paragraph for the reasons discussed above.
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007