Appeal NO. 2005-0577
Application No. 09/741,237
(2) Claims 1-2, 12, and 14-17 under § 35 U.S.C. 103(a) as
unpatentable over Allman in view of Austin.
For the reasons set forth below, we reverse the
aforementioned rejections and enter a new grounds of rejection
pursuant to of 37 CFR § 41.50(b)(2004).
OPINION
I. The 35 U.S.C. § 102(b) rejection of claim 1 and the 35 U.S.C.
§ 103(a) rejection of claims 1, 2, and 16.
For reasons stated infra in our new ground of rejection under
the provisions of 37 CFR § 41.50(b)(2004), we are of the opinion
that claims 1, 2, and 16 fail to satisfy the requirements of 35
U.S.C. § 112, second paragraph. We note that the claims, which
fail to comply with the second paragraph of Section 112, cannot be
analyzed as to whether they are patentable over the prior art
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, 134 USPQ 292 (CCPA 1962); In re Wilson, 424
F.2d 1382, 165 USPQ 494 (CCPA 1970). Accordingly, we procedurally
reverse the examiner’s rejection of claim 1 under 35 U.S.C. § 102
and claims 1, 2, and 16 under 35 U.S.C. § 103. We take no
position as to the pertinence of the prior art relied on by the
examiner with respect to the subject matter of claims 1, 2, and 16
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