Appeal No. 2002-2177 Page 19
Application No. 08/777,424
A rejection under 35 U.S.C. 103(a) should not be based on "speculations and
assumptions." In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). "All
words in a claim must be considered in judging the patentability of that claim against the
prior art. If no reasonably definite meaning can be ascribed to certain terms in the
claim, the subject matter does not become obvious -- the claim becomes indefinite." In
re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Here, for the
aforementioned reasons, speculations and assumptions would be required to decide
the meaning of the terms employed in claims 11 and 22 and the scope of the claims.
Furthermore, the examiner's treatment of claims 11 and 22 puzzles us.
Specifically, he rejects claim 11 as obvious over Taniguchi and Sano. (Examiner's
Answer at 20.) Although claim 22 depends from claim 11, the examiner excludes Sano
from its rejection as obvious over Taniguchi and Adobe. (Id. at 20.) Therefore, we
reverse pro forma the rejections of the claims 11 and 22 as obvious. We emphasize
that our reversal is based on procedure rather than on the merits of the obviousness
rejection. The reversal does not mean that we consider the claims to be patentable vel
non as presently drafted.
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