Appeal No. 2002-0265 Page 14
Application No. 08/787745
From our perspective, the specification would have instructed one of ordinary
skill in the art that “end” denotes a boundary or extent of an element, and not a section
or a portion. Thus, according to the specification, an “end” does not have a cylindrical
cross section, a taper, parallel sidewalls, or a portion of a particular diameter. This
being the case, claims 7-9 and 11-21 are indefinite because they do not describe the
invention with a reasonable degree of precision and particularity, even when interpreting
them in the light of the specification, and their the metes and bounds cannot be
determined.
The Section 103 Rejections Of Claims 7-9 and 11-21
When no 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). Since it is clear to us
that considerable speculation and assumptions are necessary to determine the metes
and bounds of what is being claimed in claims 7-9 and 11-21, and since a rejection
under 35 U.S.C. § 103 cannot be based upon speculation and assumptions, we are
constrained to reverse the examiner's rejections of these claims. In re Steele, 305 F.2d
859, 862, 134 USPQ 292, 295 (CCPA 1962). This action should not, however, be
construed as an indication that the claimed subject matter would not have been obvious
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
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