Appeal No. 95-2041
Application 07/814,220
consideration of the issues raised under the enablement re-
quirement of 35 U.S.C. § 112, first paragraph, and obviousness
under 35 U.S.C. § 103 would be premature with respect to these
claims. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238
(CCPA 1971)(One is not in position to determine whether a
claim is enabled under the first paragraph of 35 U.S.C. § 112
until the metes and bounds of that claim are determined under
the second paragraph of this section of the statute.). In re
Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA
1962)(Analyzing claims based on "speculation as to meaning of
the terms employed and assumptions as to the scope of such
claims" is legal error.).
With respect to claims 17-20 we will reach the merits of
the examiner's rejection under 35 U.S.C. § 103. We note these
claims had been rejected under 35 U.S.C. § 112, first
paragraph in the Final Rejection, mailed June 24, 1993, Paper
No. 17. However, the Examiner's Answer, mailed December 6,
1995, Paper No. 19, presents the claims that are rejected
under 35 U.S.C. § 112, first paragraph, as limited to "claims
6, 11, and 32-39." See page 11 of the Examiner's Answer, the
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