Appeal No. 2004-0189 Page 9
Application No. 09/782,782
Claims 1 to 16 and 18 to 28 are rejected under 35 U.S.C. § 112, second
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 "about" as used in the claims under appeal.
THE OBVIOUSNESS REJECTION
Considering now the rejections of claims 1 to 16 and 18 to 28 under 35 U.S.C.
§ 103, we have carefully considered the subject matter defined by these claims.
However, for reasons stated supra in our new rejection under the second paragraph of
35 U.S.C. § 112 entered under the provisions of 37 CFR 1.196(b), no reasonably
definite meaning can be ascribed to certain language appearing in the claims. As the
court in In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970) stated:
[a]ll 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 comparing the claimed subject matter with the applied Hayashi patent, it is
apparent to us that considerable speculations and assumptions are necessary in order
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