Appeal No. 2005-0537
Application No. 08/925,985 Page 12
such that the holder would not infringe appellants’ claims when
the claims are construed in light of the present application
specification.
Consequently, we sustain the examiner’s 35 U.S.C. § 112,
second paragraph rejection and make the above-noted new ground of
rejection of claims 26-28 and 32.
For reasons stated infra, we cannot determine the scope of
the claims on appeal. As the court in In re Wilson, 424 F.2d
1382, 1385, 165 USPQ 494, 496 (CCPA 1970)(CCPA 1970) stated:
All words in a claim must be considered in judging the
patentability of that claim against the prior art. If
no reasonably definite meaning can be ascribed to
certain terms in the claim, the subject matter does not
become obvious--the claim becomes indefinite.
In comparing the claimed subject matter with the applied
prior art, it is apparent to us that considerable speculations
and assumptions are necessary in order to determine the propriety
of the §§ 102 and 103 rejections of record since it cannot be
ascertained what in fact is being claimed. Since the propriety
of the examiner’s rejections under Section 102 and/or 103 cannot
be determined based on speculations and assumptions, see In re
Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962),
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