Appeal No. 2002-0220 Page 6
Application No. 08/964,496
skill in the field of the invention. Scripps Clinic & Research Found. v. Genentech Inc.,
927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed. Cir. 1991).
Having determined that Taylor does not disclose, either expressly or under the
principles of inherency, each and every element recited in claims 1 and 9, we are
constrained to reverse the examiner’s rejection of claims 1 and 9, as well as claims 2, 3,
7, 10, 11 and 15 which depend therefrom, as being anticipated by Taylor.
As discussed supra, the examiner has not set forth a basis to establish that
Taylor’s clamps 30 are capable of performing the functions called for in claims 1 and 9.
We find no suggestion in Taylor, and the examiner has not pointed to any such
suggestion, to modify the clamps 30 for such capability. Thus, we must also reverse
the examiner’s rejection of claims 4, 6, 12 and 14, which depend from claims 1 and 9,
as being unpatentable over Taylor.
We also shall not sustain the examiner’s rejection of claims 17-20. For the
reasons discussed in the new ground of rejection, infra, claims 17-20 are indefinite.
Therefore, the rejection of these claims as being anticipated by Taylor must fall
because it is necessarily based on speculative assumption as to the meaning of the
claims. See In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962). It
should be understood, however, that our decision in this regard is based solely on the
indefiniteness of the claimed subject matter, and does not reflect on the adequacy of
the prior art evidence applied in support of the rejection.
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