Appeal No. 94-3255
Application 07/673,264
Claim 55 stands rejected under 35 U.S.C. § 112, first and
second paragraphs. I would affirm the rejection of Claim 55
under the second paragraph of section 112 in-part for reasons
stated by the examiner and in-part for reasons which appear to
have escaped the attention of both the examiner and
appellants. Accordingly, while I affirm the rejection of
Claim 55 under
35 U.S.C. § 112, second paragraph, I also would have
designated the affirmance as a new ground of rejection under
37 CFR
§ 1.196(b). Because I affirm the rejection under 35 U.S.C.
§ 112, second paragraph, we would vacate the examiner’s
rejections under 35 U.S.C. § 112, first paragraph. It is
improper to analyze the claimed subject matter and consider
the merits of the rejections under the first paragraph of
section 112 “relying on what at best are speculative
assumptions as to the meaning of the claims.” In re Steele,
305 F.2d 859, 862,
134 USPQ 292, 295 (CCPA 1962). Before considering rejections
under 35 U.S.C. § 112, first paragraph, one “must first decide
. . . [what] the claims include within their scope.” In re
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