Appeal No. 97-4459 Page 5
Application No. 08/421,063
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish obviousness with respect to the
claims under appeal. Accordingly, we will not sustain the
examiner's rejections of claims 1 through 4 under 35 U.S.C. §
103. Our reasoning for this determination follows.
Before addressing the examiner's rejections 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. First, 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). Second, claims are to be
construed in the light of the specification and both are to be
read with a view to ascertaining the invention. United States
v. Adams, 383 U.S. 39, 49, 148 USPQ 479, 482 (1966).
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