Appeal No. 2003-1842 Page 9
Application No. 09/179,290
Therefore, we reject claim 6 and claim 7, which depends therefrom, under 35 U.S.C.
§ 112, ¶ 2.
A rejection 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 scope of claims 6 and 7. Therefore, we reverse pro forma the
anticipation rejection of the claims 6 and 7. 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.
C. CLAIMS 8-12
Under § 41.50(b), we enter a new ground of rejection against claims 8-12. A
claim is indefinite "where the language ‘said lever’ appears in a dependent claim where
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