Appeal No. 1997-2338
Application No. 08/173,376
In reconsidering the patentability of the claims of this application we would urge the
examiner to first ascertain the scope of the claimed subject matter. A patentability
determination must begin with the scope of the claims being ascertained. Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d 1561, 1567-68, 1 USPQ2d 1593, 1597 (Fed. Cir.), cert
denied, 481 U.S. 1052 (1987). (“Analysis begins with a key legal question--what is the
invention claimed?”). In similar fashion, the court stated in In re Wilder,
429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970), "[t]he first inquiry must be into
exactly what the claims define."
In the present application, this effort should begin with a determination of just what is
intended by the phrase “to transport a greater amount” as used in claim 52. From our
review of the specification it is not readily apparent what this language intends to compare
the claimed invention with. Similarly, claim 61 provides that the “behavior modifying
substance” is comprised of “the structural equivalent of at least one component of the
alarm pheromone.” The specification does not appear to provide guidance as to how this
phrase should be interpreted by one skilled in this art trying to ascertain the scope of the
claimed invention. We would urge the examiner and appellants to work together to
determine the meaning or intent of these two phrases so as to permit a meaningful
comparison of the claimed invention with the prior art.
Summary
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