Appeal No. 94-2232
Application 07/888,367
In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA
1971) teaches:
[T]he claims must be analyzed first in order to determine
exactly what subject matter they encompass. . . .
This first inquiry therefore is merely to determine
whether the claims do, in fact, set out and circumscribe
a particular area with a reasonable degree of precision
and particularity. It is here where the definiteness of
the language employed must be analyzed--not in a vacuum,
but always in light of the teachings of the prior art and
of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill
in the pertinent art.
Only after ascertaining exactly what subject matter is being
claimed can one (1) inquire as to the novelty of the claimed
subject matter, (2) determine whether the description of the
invention in the specification would have enabled persons
skilled in the art to make and use the full scope of the
subject matter claimed, and (3) assess the obviousness of the
claimed subject matter at the time the invention was made. In
re Wilder,
429 F.2d 447, 166 USPQ 545 (CCPA 1970) states at 450, 166 USPQ
at 548, “Once having ascertained exactly what subject matter
is being claimed, the next inquiry must be into whether such
subject matter is novel.” In re Geerdes, 491 F.2d 1260, 180
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