Appeal No. 2004-0096 Page 7
Application No. 09/785,273
art to make and/or use the same. For the reasons discussed above, one of ordinary
skill in the art would not be able to determine from appellant’s underlying disclosure
how the bisection member and air passageway are secured to the container so as to be
“detachably adhered.”
Additionally, also pursuant to our authority under 37 CFR § 1.196(b), claim 3 is
rejected under 35 U.S.C. § 112, first paragraph, as the specification, as originally filed,
does not provide support for the invention as is now claimed. As discussed above,
appellant’s specification and drawings as originally filed provide no hint that the edges
of the bisection member frictionally engage the outlet as recited in claim 3.
We shall not sustain the examiner's 35 U.S.C. § 102 rejection of claims 2 and 3
as being anticipated by Reap. For the reasons expressed above, these claims are
indefinite. Therefore, the prior art rejection must fall because it is necessarily based on
speculative assumption as to the meaning of the claims. See In re Steele, 305 F.2d
859, 862-63, 134 USPQ 292, 295 (CCPA 1962). In particular, as discussed above, the
meaning of the terminology “detachably adhered” and the dimensional limitation
required to meet this recitation in claim 3, which is the sole issue in dispute with regard
to this rejection, is not clear in light of appellant’s underlying disclosure. 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.
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