Appeal No. 2004-0676
Application No. 09/562,686
§ 1.196(b)(2003), we denominate our affirmance of the examiner’s
Section 103 rejection as including a new grounds of rejection. Our
reasons for these determinations follow.
We turn first to the examiner’s rejection of claim 31 under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which applicants regard as their invention. According to the
examiner (Answer, page 5):
Claim 31 depends from claim 17, a cancelled claim. As
such, it is impossible for one of ordinary skill in the
art to determine the metes and bounds of the claimed
subject matter.
The appellants do not dispute this determination. See the Brief
and the Reply Brief in their entirety. Accordingly, we affirm the
examiner’s decision rejecting claim 31 under 35 U.S.C. § 112,
second paragraph.
Normally, a claim which fails to comply with the second
paragraph of § 112 will not be analyzed as to whether it complies
with other statutory grounds for patentability since to do so would
of necessity require speculation with regard to the metes and
bounds of the claimed subject matter. See In re Steele, 305 F.2d
859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962); In re Wilson, 424
F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Nevertheless, in
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