Appeal No. 2005-2175
Application 10/104,383
1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986)); see also In re Warmerdam, 33 F.3d 1354,
31 USPQ2d 1754, 1759 (Fed. Cir. 1994).
Accordingly, we determine that claim language of appealed claim 35 and the appealed
claims dependent thereon raises the issue of whether appealed claims 35, 47 through 66 and 69
comply with the provisions of 35 U.S.C. § 112, second paragraph. On this record, we find it
virtually impossible to ascertain the propriety of the grounds of rejection of these appealed
claims under 35 U.S.C. § 103(a). This is because the scope of these claims is unclear and we
will not make unsupported, speculative assumptions as to that scope thereof. It is well settled
that when the metes and bounds of a claimed invention are sufficiently unclear as to require
speculation as to the meaning of terms found therein, a rejection under 35 U.S.C. § 103 cannot
be supported. See In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970); In re Steele, 305
F.2d 859, 134 USPQ 292 (CCPA 1962).
Therefore, on this record, we reverse the grounds of rejection of appealed claims 35,
47 through 66 and 69 under 35 U.S.C. § 103 pro forma.1
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner that, prima facie, the claimed
thermoplastic flooring plank encompassed by appealed claims 67 and 68 would have been
obvious over the combined teachings of Pollock, Pitman, Nelson and Haid (sixth and eight
grounds of rejection in the answer, pages 7-8 and 11) and of Pollock, Pitman and Nelson (third
and seventh grounds of rejection in the answer, pages 10 and 11-12), respectively, to one of
1 We decline to exercise our authority under 37 CFR § 41.50(b) (2005) and enter a new ground
of rejection of appealed claims 35, 47 through 66 and 69 under 35 U.S.C. § 112, second
paragraph, leaving this matter to the examiner to consider upon any further prosecution of the
appealed claims subsequent to the disposition of this appeal. Our analysis of these claims and
the alleged basis therefor in the specification raises the further issue of whether these claims
comply with the provisions of 35 U.S.C. § 112, first paragraph, written description requirement.
See generally, In re Alton, 76 F.3d 1168, 1172, 1175-76, 37 USPQ2d 1578, 1581, 1583-84 (Fed.
Cir. 1996) (a prima facie case of non-compliance with the written description requirement of
§ 112, first paragraph, is established by showing that an applicant “claims embodiments of the
invention that are completely outside the scope of the specification”); Ex parte Grasselli,
231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir 1984) (a negative limitation
which does not appear in the written description of the specification as filed violates the written
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