Appeal No. 2003-0454 Page 8
Application No. 09/644,734
paragraph, as being indefinite for failing to particularly point out and distinctly claim the
invention, for the reasons explained above.
As set forth previously, our review of the specification leads us to conclude that
one of ordinary skill in the art would not be able to understand the metes and bounds of
the terminology "substantially the same" as used in independent claims 1, 16 and 29.
While we might speculate as to what is meant by the claim language, our
uncertainty provides us with no proper basis for making the comparison between that
which is claimed and the prior art as we are obliged to do. Rejections under 35 U.S.C.
§ 102(b) and 35 U.S.C. § 103 should not be based upon "considerable speculation as
to the meaning of the terms employed and assumptions as to the scope of the claims."
See In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). When no
reasonably definite meaning can be ascribed to certain terms in a claim, the subject
matter does not become anticipated or obvious, but rather the claim becomes indefinite.
See In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).
Accordingly, we are constrained to reverse, pro forma, the examiner's rejections of
claims 1 to 7, 10, 12 to 20, 23 and 25 to 37 under 35 U.S.C. § 102(b) as being
anticipated by Miyashita and claims 11 and 24 under 35 U.S.C. § 103 as being
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