Appeal No. 96-0987
Application No. 08/226,467
examiner and the appellants, we refer to pages 3 through 9 of the
examiner's answer and to pages 3 through 6 of the appellants'
brief for the full exposition thereof.
OPINION
In arriving at our decision in this appeal, we have
given careful consideration to appellants' specification and
claims, to the applied prior art, and to the respective positions
advanced by the appellants and by the examiner. Upon evaluation
of all the evidence before us, it is our conclusion that the
evidence adduced by the examiner is insufficient to establish a
prima facie case of obviousness with respect to all claims on
appeal. Our reasoning for this determination follows.
Initially, we observe that prior to an analysis of
whether the claims on appeal are patentable under 35 U.S.C.
§ 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."
In re Moore,supra, This analysis of the claims must be made, not
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