Appeal No. 2002-1481
Application No. 09/005,836
them indefinite, an evaluation thereof relative to prior art is
inappropriate. See In re Wilson, 424 F.2d 1382, 1385, 165 USPQ
494, 496 (CCPA 1970) and In re Steele, 305 F.2d 859, 862, 134
USPQ 292, 295 (CCPA 1962). Since an obviousness rejection cannot
be based on speculation and conjecture as to what is being
claimed, we are constrained to reverse the examiner's rejection
under 35 U.S.C. § 103(a). This reversal is procedural in nature
and not founded upon the merits of the obviousness rejection.
Thus, it is quite important to recognize that we take no position
as to the pertinence of the prior art relied on by the examiner
since this prior art clearly cannot be applied until it can be
determined what in fact is being claimed.
Under the provisions of 37 CFR § 1.196(b), we introduce the
following new rejection.
Claims 1 through 6 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Independent claim 1 sets forth an electromagnetic shield for
use with a circuit board having circuit devices comprising, inter
alia, a first conductive coating where the coating extends from a
3
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