Ex parte MIMEUR et al. - Page 3




          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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