Appeal No. 2007-0441
Reissue Application 10/155,945
Patent 5,311,959
1 limited.” MBO Laboratories, Inc. v. Becton, Dickinson & Company,
2 474 F.3d 1323, 1331, 81 USPQ2d 1661, 1667 (Fed. Cir. 2007).
3 The fundamental problem in this case is to determine the “scope” if
4 any of patent claim 1. Once that scope is determined, it can be compared to
5 the scope of reissue claim 1 to see if reissue claim 1 “enlarges” the scope of
6 patent claim 1.
7 Binding precedent tells us that a claim which is indefinite cannot be
8 unpatentable based on obviousness. Rather, the claim is unpatentable as
9 being indefinite. See In re Steele, 305 F.2d 859, 863, 134 USPQ 292, 295
10 (CCPA 1962) and In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496
11 (CCPA 1970). We are of the opinion that cases like Steele and Wilson
12 foreclose the Examiner’s observation to the effect that indefinite claims must
13 be examined giving the claim the broadest possible scope by essentially
14 interpreting the claims as best as possible. Examiner’s Answer, page 7. The
15 subject matter of a claim which is indefinite cannot be compared to the prior
16 art to determine, e.g., differences between the claim and the prior art.
17 Likewise, we are having a difficult time seeing how the claim could be
18 compared to a device said to infringe the claim.
19 In this case, for example, no matter how hard one wiggles—like the
20 stepsisters trying to squeeze into Cinderella’s glass slipper—one cannot read
21 the drawing figures on to patent claim 1. The drawings simply will not fit.
22 In fact, no device would fall within the scope of patent claim 1 because it
23 requires an element to be both parallel and orthogonal (i.e., perpendicular) to
24 another element. In the world of physics and geometry this is a “no-no.”
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