Appeal No. 2002-0950 Page 6
Application No. 09/655,147
observation that the claim strings together a series of limitations so long that it is
difficult, if not impossible, for the reader to determine which elements of the claim have
the recited features and that, contrary to appellant’s comments in the first paragraph on
page 9 of the brief, the interests of appellant would be well served if appellant’s counsel
followed the recommendations made by the examiner.
For the foregoing reasons, we agree with the examiner that the terminology
alluded to by the examiner is unclear and renders the scope of the claim indefinite.
Thus, we shall sustain the examiner’s rejection of claim 1 under the second paragraph
of 35 U.S.C. § 112.
The obviousness rejection
We recognize the inconsistency implicit in our holding that claim 1 is indefinite
under 35 U.S.C. § 112, second paragraph, as failing to particularly point out and
distinctly claim the invention, with a determination as to whether claim 1 is unpatentable
under 35 U.S.C. § 103. Normally, when substantial confusion exists as to the
interpretation of a claim and no reasonably definite meaning can be ascribed to the
terms in a claim, a determination as to patentability under 35 U.S.C. § 103 is not made.
See In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962) and In re
Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). However, in this
instance, inasmuch as claim 1 contains another limitation which can be understood and
which we have determined is not met by the prior art applied by the examiner, we have
reached a determination as to the patentability of claim 1 over the applied prior art to
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