Appeal No. 94-3222
Application 07/815,630
allergen” in Claim 6 (emphasis added), and the phrase
“excludes molecules of greater than 100,000 daltons” in Claim
2. We will refrain from considering the patentability of the
claimed subject matter under 35 U.S.C. § 101 and under 35
U.S.C. § 112, first paragraph, until the examiner has first
interpreted the meaning and breadth of the aforementioned
terms and phrases in light of the description of the claimed
subject matter in the specification and the teachings of the
prior art. Id. at 1235, 169 USPQ at 238.
Moreover, we do not understand how it is possible for the
examiner of this application to consider the meaning and
breadth of the terms and phrases in appellants’ claims in
light of the prior art or to determine whether this
specification would have enabled persons skilled in the art at
the pertinent time to make and use the full scope of invention
claimed without having first determined the effective filing
date of the subject matter claimed. Unless and until the
effective filing date of the subject matter presently claimed
is established, what is and what is not prior art as to the
subject matter presently claimed can be no more than
speculative.
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007