Appeal No. 97-2451 Page 3
Application No. 08/260,635
brief (Paper No. 15, filed December 16, 1996) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Before addressing a rejection based upon prior art, it is an
essential prerequisite that the claimed subject matter be fully
understood. Analysis of whether a claim is patentable over the
prior art under 35 U.S.C. §§ 102 and 103 begins with a
determination of the scope of the claim. The properly
interpreted claim must then be compared with the prior art.
Claim interpretation must begin with the language of the claim
itself. See Smithkline Diagnostics, Inc. v. Helena Laboratories
Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed. Cir. 1988).
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