Appeal No. 1999-0660
Application No. 08/312,406
Discussion Regarding The Standing Rejections
With regard to the rejections based on Quigley, appellant argues inter alia that
Quigley’s central forming member 10 is not in opposed facing relationship with the outer
sheath 13 because of the presence of the intermediate annular member 12 in the
patentee’s embodiment of Figure 1. We agree with the examiner, however, that the
appealed claims are not drafted in such a way to exclude Quigley’s intermediate member
13. The “facing” relationship recited in claim 1, to the extent that the claim language is
understandable,5 does not require an annular void space to be present between the
forming member and the sheath as appellant seems to argue.
Notwithstanding our agreement with the examiner on the foregoing matter, we
cannot sustain any of the rejections of the appealed claims without resorting to
speculation about certain indefinite language in claim 1, which is the only independent
claim on appeal. In light of the holding in In re Steele, 305 F.2d 859, 862, 134 USPQ
292, 295 (CCPA 1962), we are constrained to reverse the examiner’s decision to reject
claims 1-3 and 5-9 under § 102(e) as anticipated by Quigley, the examiner’s decision to
reject claims 1, 4 and 10 under § 103(a) as unpatentable over Quigley and the examiner’s
decision to reject claims 1-9 under § 103(a) as unpatentable over Killop. 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 standing rejections.
5 See our new ground of rejection under 35 U.S.C. § 112, second paragraph.
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