Appeal No. 2002-2136 Page 7
Application No. 09/761,077
In light of the above, we enter a new ground of rejection of appellant’s claim 2
under the second paragraph of 35 U.S.C. § 112, second paragraph, as being indefinite
for failing to particularly point out and distinctly claim the invention.
We shall not sustain the examiner's 35 U.S.C. § 103 rejection of claim 2 as being
unpatentable over Makowka in view of Gurewitz and Fromm. For the reasons
expressed above, this claim is indefinite. Therefore, the prior art rejection must fall
because it is necessarily based on speculative assumption as to the meaning of the
claim. See In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962). 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 rejection.
CONCLUSION
To summarize, the decision of the examiner to reject claim 2 under 35 U.S.C.
§ 103 is reversed and a new rejection of claim 2 under the second paragraph of 35
U.S.C. § 112 is entered pursuant to 37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant to 37 CFR § 1.196(b),
which provides that, "A new ground of rejection shall not be considered final for
purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options
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