Appeal 2006-3236
Inter Partes Reexamination Control No. 95/000,006
body" because the second wall surface is actually part of the first surface of
the main body and, as claimed, extends away from itself, as discussed in the
§ 112, second paragraph, rejection. Nevertheless, it appears from Patent
Owners' proposed amendment that what was intended was "said second wall
surface extending from said first wall surface in a direction away from said
bottom surface," and the Examiner assumed for purposes of the anticipation
rejection that this is what was intended (Right of Appeal Notice 7). We
examine claim 16 with this interpretation rather than conclude that it is not
definite enough to decide the issue of patentability. Cf. In re Steele,
305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962) ("[O]ur analysis of
the claims leaves us in a quandary as to what is covered by them. We think
the examiner and the board were wrong in relying on what at best are
speculative assumptions as to the meaning of the claims and basing a
rejection under 35 U.S.C. § 103 thereon.").
Claim 16, as proposed to be amended, recites "said second wall
surface extending from said first wall surface in a direction away from said
bottom surface," whereas claim 1 recites "said second wall surface extending
upward from an upper edge of said first wall surface." Although claim 16
does not recite an "upper edge," there implicitly must be some way to
distinguish the first and second wall surfaces. The limitation, "said second
wall surface extending from said first wall surface," impliedly requires that
the second wall surface extends from an "edge" of the first wall surface. The
limitation, "said second wall surface extending . . . in a direction away from
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