Appeal No. 1996-3670 Page 11
Application No. 08/217,063
to any of the optional programs OP1y, the central computer system
14 monitors and records the changes made to the software. . . .”
Col. 4, ll. 29-33. Therefore, we reverse the rejection of
claim 1 as obvious.
Turning to claim 2, we recall that an obviousness rejection
should not be based on "speculations and assumptions." In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). "All
words in a claim must be considered in judging the patentability
of that claim against the prior art. If no reasonably definite
meaning can be ascribed to certain terms in the claim, the
subject matter does not become obvious-the claim becomes
indefinite." In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494,
496 (CCPA 1970).
Here, for the reasons we explained in addressing the
indefiniteness of claim 2, our analysis leaves us in a quandary
about what the claim specifies. Speculations and assumptions
would be required to decide the scope of the claim. Therefore,
we reverse pro forma the rejection of claim 2 as obvious.
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