Appeal No. 94-3222
Application 07/815,630
should determine the effective filing date of the subject
matter here claimed before ruling on patentability under
either 35 U.S.C. § 112, first paragraph, § 101, § 102, or §
103. It is as of the
effective filing date that compliance with 35 U.S.C. §§ 112,
first paragraph, and 101 and prior art availability must be
determined.
Only after determining the effective filing date of the
subject matter claimed may the examiner (1) determine whether
appellants’ claims satisfy 35 U.S.C. § 112, second paragraph,
in light of applicants’ disclosure and the prior art, (2)
consider whether the subject matter claimed is patentable
under 35 U.S.C. § 101 or whether applicants’ disclosure would
have enabled one skilled in the art to make and use the full
scope of the claimed subject matter as required by 35 U.S.C. §
112, first paragraph, (3) determine patentability under 35
U.S.C. §§ 102 and 103 in view of the prior art (compare
Chester v. Miller, 906 F.2d 1574,
1576, 15 USPQ2d 1333, 1336 (Fed. Cir. 1990), citing In re
Gosteli, 872 F.2d 1008, 1010-1011, 10 USPQ2d 1614, 1616 (Fed.
Cir. 1989)), and (4) determine whether the subject matter
claimed in this case is unpatentable for obviousness-type
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