Appeal No. 2001-2454 Page 8
Application No. 09/267,355
also is applicable here, and thus claims 18-20 are indefinite on this ground.
The Examiner’s Rejections
When no definite meaning can be ascribed to certain terms in a claim, the
subject matter does not become unpatentable, but rather the claim becomes indefinite.
In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Since it is clear
to us that considerable speculation and assumptions are necessary to determine the
metes and bounds of what is being claimed, and since rejections cannot be based upon
speculation and assumptions, we are constrained to reverse all three of the examiner's
rejection s that are based upon prior art. In re Steele, 305 F.2d 859, 862, 134 USPQ
292, 295 (CCPA 1962). We hasten to point out, however, that the actions we have
taken should not be construed as an indication that the claimed subject matter would
not have been unpatentable in view of the prior art cited against the claims. We have
not addressed this issue, for to do so would require on our part the very speculation
which formed the basis of our rejection under Section 112.
Because of the indefiniteness of the claims discussed above in the newly
entered rejection under the second paragraph of Section 112, the propriety of the
rejections based upon the prior art cannot be evaluated. Therefore, as explained in the
preceding paragraph, none of the examiner’s rejections based upon prior art are
sustained.
CONCLUSION
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