Appeal No. 2003-1842 Page 10
Application No. 09/179,290
no such ‘lever’ has been previously recited in a parent claim to that dependent claim . . .
." Ex parte Moelands, 3 USPQ2d 1474, 1476 (Bd. Pat. App. & Int. 1987).
Here, although claims 8-10 each includes the language "the pixel map," no such
"pixel map" has been previously recited therein. Because the claims lack antecedent
basis for "the pixel map," we are unpersuaded that one skilled in the art would
understand the bounds of claims 8-10 when read in light of the specification. Therefore,
we reject claim 8-10 and claims 11 and 12, which depend from claim 10, under 35
U.S.C. § 112, ¶ 2.
For the same reasons, speculations and assumptions would be required to
decide the scope of claims 8-12. Therefore, we reverse pro forma the anticipation
rejection of the claims 8-12. We again 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.
CONCLUSION
In summary, the rejection of claims 2-12 under § 102(e) is reversed. A new
rejection of claims 6-12 under § 112, ¶ 2, is added. 37 C.F.R. § 41.50(b) (2004)
provides that "[a] new grounds of rejection pursuant to this paragraph shall not be
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