Appeal No. 94-2232
Application 07/888,367
USPQ 789, (CCPA 1974) clarifies at 491 F.2d at 1262, 180 USPQ
at 791, “Before considering the rejections under 35 U.S.C. 103
and 112, we must first decide whether the claims include
within their scope the presence of recognized . . . agents.”
So instructed, we should not and accordingly will not
review the appealed rejection of Claims 8, 10(8), and 11(8)
under
35 U.S.C. § 103 in view of the teachings of Walujono,
Broekaert, Weissman and White until the examiner first
ascertains exactly what is being claimed, i.e., the full scope
of cDNA “derived from the cDNA shown in Figure 2 which detects
the presence of the hevein peptide sequence encoded by the
RNA” (Claim 8). Claim interpretation is a matter of law, and
the Board certainly has authority to interpret the meaning of
the terms in appellants’ claims in the first instance.
However, we hesitate to do so in this case. Where, as here,
the technology to which the subject matter relates is complex
and the level of skill in the art is high, it is most
desirable for the Board to review an examiner’s rejections of
claims in light of a record with preliminary claim
interpretation, comprehensive findings, consideration of all
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