Ex parte MOORMAN - Page 9




          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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