Appeal No. 94-3222
Application 07/815,630
symptoms of allergy to said allergen, wherein said food
product comprises a non-antibody fraction of milk from a
milk-producing animal that has been immunized with said
allergen.
2. Discussion
It should have been apparent from the questions this
panel of the Board asked counsel at Oral Hearing on July 16,
1998, that we should not rule on the merits of this appeal
because, as a matter of law, it would be incorrect to do so.
Accordingly, we vacate the examiner’s decision finally
rejecting the subject matter on appeal under 35 U.S.C. § 101
and under 35 U.S.C. § 112, first paragraph, for reasons which
follow.
We have searched the record of this case and do not find
any indication that the metes and bounds of the subject matter
claimed have been established. Where, as here, the issues
presented for our review concern the practical utility of the
full scope of the subject matter claimed and the
specification’s capacity to enable one skilled in the art to
make and use the full scope of the subject matter claimed,
claim interpretation is a necessary prerequisite to resolution
of the merits of the issues presented. See In re Steele, 305
F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962)(When an analysis
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