Appeal No. 2006-0533
Application 09/838,420
In light of these new rejections, we pro forma reverse
the outstanding rejection of claims 1 through 11 under 35 U.S.C.
§ 103 because the subject matter encompassed by these claims on
appeal must be reasonably understood without resort to specula-
tion to apply prior art to them. Note In re Steele, 305 F.2d
859, 862, 134 USPQ 292, 295 (CCPA 1962). Note also In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). It is
important to note that the reversal of the outstanding art
rejection under 35 U.S.C. § 103 should not necessarily be
construed as a reversal of the rejection on the merits. The
prior art relied upon by the examiner appears to be pertinent to
the disclosed invention and may in fact be pertinent to properly
definite claims within 35 U.S.C. § 112 as well as claims that
meet 35 U.S.C. § 101. Therefore, the examiner is free to choose
to reinstitute during future prosecution the present rejection
under 35 U.S.C. § 103 and/or utilize any additional or different
prior art.
In view of the foregoing, we have essentially affirmed
the examiner’s rejection of claim 11 under 35 U.S.C. § 112,
second paragraph, and the separate rejection of this claim under
35 U.S.C. § 101 and, in the process, extended these rejections
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