Appeal No. 95-3406
Application 07/940,016
appealed claim 7 cannot be anticipated by the casing of Stiso,
and we cannot sustain the examiner's rejection of claim 7 under
35 U.S.C. § 102(b).
Turning next to the rejection of appealed claim 8 under2
35 U.S.C. § 103, we observe that prior to an analysis of whether
this claim on appeal is patentable under § 103, similar to the
situation in In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971), "the claims must be analyzed first in order to
determine exactly what subject matter they encompass," and the
first inquiry is thus to "determine whether the claims do, in
fact, set out and circumscribe a particular area with a
reasonable degree of precision and particularity." Moore, supra.
This analysis of the claims must be made, not in a vacuum, but in
light of the specification disclosure and the teachings of the
prior art.
With this in mind, we analyze dependent claim 8, which reads
[t]he casing of claim 6, wherein said first
member comprises a depression at an end
thereof of [sic] opposite to the end at which
one of said openings is positioned.
We note that this claim is identical to claim 5 as originally filed2
(except that it is dependent from claim 6 rather than claim 1 which has now
been canceled, and it includes the word "of" after the word "thereof" in line
2 that seems to have been added inadvertently since it renders the claim
confusing).
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