Appeal No. 2006-0524 Παγε 6
Application No. 10/051,577
because the claims on appeal do not recite telescoping adaptors and accordian like
adaptors.
In regard to the examiner's rejection of claims 1 to 3, 8 and 20 under 35 U.S.C.
§ 103 as being unpatentable over Sarring, we make reference to our new rejection infra
where we explain why the claim limitation of a "closed compact unit" in claim 1 does not
comply with the second paragraph of 35 U.S.C. § 112. Rejections based on 35 U.S.C.
§ 103 should not be based upon considerable speculation as to the meaning of terms
employed and assumptions as to the scope of the claims In re Steele, 305 F.2d 859,
862, 134 USPQ 292, 295 (CCPA 1962). When no reasonably definite meaning can be
ascribed to certain terms in a claim, the subject matter does not become obvious, but
rather the claim becomes indefinite. In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494,
496 (CCPA 1970). Accordingly, we are constrained to reverse the examiner's rejection
of claim 1 as well as claims 2, 3, 8 and 20 as being unpatentable over Sarring. This
reversal is not based upon any evaluation of the merits thereon and does not preclude
the examiner's advancement of a rejection predicated upon the applied prior art against
a definite claim.
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