Appeal 2007-2173
Application 09/682,701
also not clear whether our understanding of the claim language is what the
Appellants’ intended. For example, the “selected by” phrase could have been
meant to refer to the output of the computing device and not to the item. The
claims, however, are worded in such a way that they are vague and indefinite.
As such, we find that the claims now pending are so indefinite that those
skilled in the art would not be able to understand what is claimed when the claim is
read in light of the Specification. Because no reasonably definite meaning can be
ascribed to certain language appearing the claims, we enter a new ground of
rejection of claims 1-16 and 19-23 under 35 U.S.C. § 112, second paragraph.
Obviousness Rejection
Because we find that the claims and the terms used therein are indefinite and
a determination of the scope of the claims would require us to resort to
considerable speculation as to the meaning of the terms employed and assumptions
as to the scope of the claims, any determination on the merits of the Examiner’s
obviousness rejection is imprudent. See In re Steele, 305 F.2d at 862. As such, we
are constrained to reverse, pro forma, the Examiner's rejection of claims 1-16 and
19-23 under 35 U.S.C. § 103(a) as unpatentable over Evans and Foley. We hasten
to add that this is a procedural reversal rather than one based upon the merits of the
obviousness rejection.
12
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013