Appeal No. 2004-1805
Application No. 09/928,359
II. The Anticipation Rejections
Analysis of whether a claim is patentable over the prior
art under 35 USC § 102 or § 103 begins with determination of the
scope of the claim. The properly interpreted claim must then be
compared with the prior art.
Because the appealed claims fail to satisfy the
definiteness requirements of the second paragraph of § 112, it
reasonably follows that the examiner’s rejections under § 102
cannot be reached at this time.
To that end, the predecessor of our appellant reviewing
court has held that it is erroneous to analyze claims based on
“speculation as to the meaning of the terms employed and
assumptions” as to their scope. In re Steele, 305 F.2d 859,
862, 134 USPQ 292, 295 (CCPA).
Consequently, in comparing the claimed subject matter with
the applied art, it is apparent that considerable speculations
and assumptions are necessary in order to determine what in fact
is being claimed. Since a rejection based on prior art cannot
be based on speculations and assumptions, we reverse, pro forma,
the examiner’s § 102 rejections. Id.
It is noteworthy that is a procedural reversal rather that
one based upon the merits of the 35 U.S.C. § 102 rejections.
III. Conclusion
The 35 U.S.C. § 112 second paragraph rejection is affirmed.
Each of the anticipation rejections is reversed on procedural
grounds.
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