Appeal No. 2004-2079 Page 10
Application No. 09/754,958
Conclusion
Analyzing claims based on “speculation as to meaning of the terms employed
and assumptions as to the scope of such claims” is legal error. In re Steele, 305
F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). Accordingly, having found the
claims to be indefinite we do not reach the merits of the rejections under 35
U.S.C. § 112, first paragraph, or the merits of the other rejections under 35
U.S.C. § 112, second paragraph, see Answer, pages 10-11, lettered paragraphs
D, E and G.
OTHER ISSUES
In the event of further prosecution, we encourage the examiner to
consider whether the recitation of formulas II and III as they appear in claim 17
represents new matter with regard to the specifications’ disclosure (pages 7-8) of
formulas II and III. In this regard, we direct the examiner’s attention to MPEP
§ 2163.06. In addition, we encourage the examiner to take a step back and
reconsider the claimed invention with regard to the relevant prior art to determine
whether a claim 17, as discussed above, which is drawn to a compound
comprising a solid support attached to a linker that allows cleavage for liberation
of a bond is novel and unobvious under 35 U.S.C. § 102 and § 103.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).
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