Appeal No. 2004-1302
Application No. 09/789,757
determined that Cheung does not anticipate claim 3, from which
claim 20 depends, we shall not sustain the rejection of claim
20 as being anticipated by Cheung, it being noted that this is a
reversal on the merits and not merely a procedural reversal.
Concerning the standing rejection of claims 26, 29-32, 35,
36, 44, 45 and 47-50 as being anticipated by Cheung, independent
claim 26 is similar to claim 20 in that it calls for the rosette
to have a thickness less than a thickness of the tray. We again
make reference to our new rejection infra where we explain why
this claim limitation does not comply with the second paragraph
of 35 U.S.C. § 112. Rejections based on 35 U.S.C. §§ 102 and
103 should not be based upon considerable speculation as to the
meaning of the terms employed and assumptions as to the scope of
the claims. Steele, 305 F.2d at 862, 134 USPQ at 295. When no
reasonably definite meaning can be ascribed to certain terms in a
claim, the subject matter does not become anticipated or obvious,
but rather the claim becomes indefinite. In re Wilson, 424 F.2d
1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Accordingly, we are
constrained to reverse the examiner’s rejection of claim 26, as
well as claims 29-32, 35, 36, 44, 45 and 47-50 that depend
therefrom, as being anticipated by Cheung. This reversal is not
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