Ex parte SHINBASHI et al. - Page 4




          Appeal No. 95-3710                                                          
          Application 07/621,005                                                      


          the details thereof.                                                        
                                       OPINION                                        
               After a careful review of the evidence before us, we do not            
          agree with the Examiner that claims 6 through 8 and 19 through 23           
          are properly rejected under 35 U.S.C.  103 as being unpatentable           
          over Appellants' prior art Figures 2 and 3.  In addition, we fail           
          to find that the claims 6 through 8 are properly rejected under             
          35 U.S.C.  112, second paragraph.                                          
               We turn first to the Examiner's rejection of claims 6                  
          through 8 under 35 U.S.C.  112, second paragraph.  Analysis of             
          35 U.S.C.  112, second paragraph, should begin with the                    
          determination of whether claims set out and circumscribe a                  
          particular area with a reasonable degree of precision and                   
          particularity; it is here where definiteness of the language must           
          be analyzed, not in a vacuum, but always in light of teachings of           
          the disclosure as it would be interpreted by one possessing                 
          ordinary skill in the art.  In re Johnson, 558 F.2d 1008, 1015,             
          194 USPQ 187, 193 (CCPA 1977), citing In re Moore, 439 F. 2d                
          1232, 1235, 169 USPQ 236, 238 (1971).  Furthermore, our reviewing           
          court points out that a claim which is of such breadth that it              
          reads on subject matter disclosed in the prior art is rejected              
          under 35 U.S.C.  102 rather than under 35 U.S.C.  112, second             

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