Appeal No. 94-3182
Application 07/899,707
subject matter is novel.”) See also In re Moore, 439 F.2d
1232, 1235, 169 USPQ 236, 238 (CCPA 1971):
[T]he claims must be analyzed first in order to
determine exactly what subject matter they
encompass. . . .
This first inquiry therefore is merely to
determine whether the claims do, in fact, set out
and circumscribe a particular area with a reasonable
degree of precision and particularity. It is here
where the definiteness of the language employed must
be analyzed--not in a vacuum, but always in light of
the teachings of the prior art and of the particular
application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the
pertinent art.
The examiner appears here to have interpreted the claim
language in a vacuum. It is certainly true that terms which
merely set forth the intended use for, or a property inherent
in, subject matter that is in fact old, do not differentiate
the claimed subject matter from the subject matter the prior
art describes. In re Pearson, 494 F.2d 1399, 1403, 181 USPQ
641, 644 (CCPA 1974). However, Pearson cautions at 1403, 181
USPQ at 644:
We do not mean to imply that terms which recite
the intended use or a property . . . can never be used
to distinguish a new from an old composition. However,
assuming their compliance with the definiteness
requirement
of the second paragraph of 35 U.S.C. 112, such terms must
define, indirectly at least, some characteristic not
found
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