Appeal No. 2004-0389 Page 8
Application No. 09/853,339
For the foregoing reasons, we find appellants’ arguments unpersuasive of any
error on the part of the examiner in determining that the subject matter of claim 1 is
anticipated by Gschwendtner. Thus, we shall sustain this rejection.
We shall not, however, sustain the examiner's 35 U.S.C. § 103 rejection of claim
14 as being unpatentable over Gschwendtner. For the reasons expressed below, this
claim is indefinite. Therefore, the prior art rejection must fall because it is necessarily
based on speculative assumption as to the meaning of the claims. See In re Steele,
305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962). It should be understood,
however, that our decision in this regard is based solely on the indefiniteness of the
claimed subject matter, and does not reflect on the adequacy of the prior art evidence
applied in support of the rejection.
NEW GROUND OF REJECTION
Claim 14 is rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the invention.
Claim 14 recites that the steel sheet module “completely encloses the escalator
machine.” The terminology “completely encloses” is ordinarily understood to mean
surrounding on all sides. As the steel sheet module recited in the claim appears to
correspond to the steel sheet 120 illustrated in appellants’ Figure 11 and steel sheet
120 only covers the escalator on one side, claim 14 appears to be inconsistent with the
underlying disclosure, thereby rendering the claim indefinite under 35 U.S.C. § 112,
second paragraph. See In re Cohn, 438 F.2d 989, 993, 169 USPQ 95, 98 (CCPA
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