Appeal No. 2006-1296 Page 3
Application No. 10/759,873
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, to the applied prior art, and to the respective positions
articulated by the appellant and the examiner. As a consequence of our review, we make the
following determinations.
We turn our attention first to the obviousness-type double patenting rejection of claims 1-
3. Claim 2 of the Kirschner patent recites all of the limitations of claims 1 and 3 of the present
application, including each upstanding engagement portion being at an obtuse angle to the flat
anchor portion, but does not expressly recite that the obtuse angle is “substantially greater than
90o.” Claim 3 of the Kirschner patent likewise recites all of the limitations of claim 2 of the
present application except for an express recitation of the obtuse angle being “substantially
greater than 90o.”
As explained in our new ground of rejection, infra, the present specification lacks
sufficient guidance to permit one of ordinary skill in the art to ascertain the scope of the
terminology “substantially greater than 90o” with the requisite certainty to satisfy the second
paragraph of 35 U.S.C. § 112, thereby rendering claims 1-3 indefinite. We recognize the
inconsistency implicit in our holding that claims 1-3 are rejectable under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the invention with a
holding that these claims are unpatentable under the doctrine of obviousness-type double
patenting. Normally, when substantial confusion exists as to the interpretation of a claim and no
reasonably definite meaning can be ascribed to the terms in a claim, a determination as to
patentability under 35 U.S.C. § 103, or in this case obviousness-type double patenting, is not
made. See In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962) and In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). However, in this instance, we consider
it to be desirable to avoid the inefficiency of piecemeal appellate review. See Ex parte Ionescu,
222 USPQ 537, 540 (Bd. App. 1984). For purposes of deciding the appeal of the obviousness-
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