Appeal No. 2001-0421
Application 08/926,835
In order to consider the merits of the Examiner’s
rejection, we would first have to compare the claimed
subject matter with the relevant prior art which would
necessarily require that we speculate or make
assumptions as to what is intended by the claims.
Thus, we have decided to vacate the examiner’s
rejection and enter a new ground of rejection under 37
CFR § 1.196(b). See In re Steele, 305 F.2d 859, 862-
63, 134 USPQ 292, 295-96 (CCPA 1962) and In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970)
[Id., at pages 12-13].
As previously explained, the majority’s indefiniteness
position is without merit. However, even assuming that the
appealed claims are indefinite, the majority has acted improperly
and irresponsibly in vacating the examiner’s prior art
rejections. This is because the one and only reason given by the
majority for this vacatur is that the majority would have to
speculate or make assumptions regarding “whether the claims are
limited to (1) the addition of an exogenous acid, (2) in situ
formation of an acid or are intended to encompass both manners of
providing the stated acid.” Id., at page 10. Clearly, the
degree of uncertainty presumed by the majority is extremely
narrow in that it includes only two possible “manners of
providing the stated acid.” Id. Under these circumstances, the
responsible course of action would be to evaluate the merits of
the examiner’s prior art rejections with respect to both of these
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