Appeal No. 2006-1246 Page 7
Application No. 09/726,372
Appellants in the Brief have not directed us to a particular C.C.P.A. decision or
the specific scientific principle that provides support for this argument. As such, these
arguments are not persuasive for the reasons stated above.
We now turn to the remaining rejections.
The initial inquiry into determining the propriety of the Examiner’s §§ 102(b) and
103(a) rejections is to correctly construe the scope of the claimed subject matter. Gechter
v. Davidson, 116 F.3d 1454, 1457, 1460 n.3, 43 USPQ2d 1030, 1032 n.3 (Fed. Cir. 1997);
In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994). Upon careful
review of the claimed subject matter in light of the specification, it is apparent to us that the
metes and bounds of the claimed subject matter cannot be ascertained. Therefore, we
are unable to determine the propriety of the Examiner’s § 102(b) rejection. To do so would
require speculation with regard to the metes and bounds of the claimed subject matter for
reasons set forth below. See In re Wilson, 424, F.2d 1382, 1385, 165 USPQ 494, 496
(CCPA 1970); In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962).
Accordingly, we procedurally reverse the Examiner’s §§ 102(b) and 103(a) rejections1 and
enter a new ground of rejection against the claims on appeal as shown below:
1 This procedural reversal is not based upon the merits of the Examiner’s §§ 102(b) and 103(a)
rejections.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007