Appeal No. 2004-0189 Page 10
Application No. 09/782,782
to determine what in fact is being claimed. Since a rejection based on prior art cannot
be based on speculations and assumptions, see In re Steele, 305 F.2d 859, 862, 134
USPQ 292, 295 (CCPA 1962), we are constrained to reverse, pro forma, the examiner's
rejections of claims 1 to 16 and 18 to 28 under 35 U.S.C. § 103. We hasten to add that
this is a procedural reversal rather than one based upon the merits of the section 103
rejection.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 to 16 and 18 to 28
under 35 U.S.C. § 103 is reversed and a new rejection of claims 1 to 16 and 18 to 28
under 35 U.S.C. § 112, second paragraph, has been added pursuant to provisions of
37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant to 37 CFR § 1.196(b).
37 CFR § 1.196(b) provides that, "[a] new ground of rejection shall not be considered
final for purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options
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