Appeal No. 95-1484
Application 08/070,650
which the applicants regard as their invention, the examiner
concluded that appellants’ specification would not have
enabled persons skilled in the art to make and use
“substantially reticulated cellulose” because neither the
microorganism which produces the indicated product under the
conditions specified nor the product which is produced by
suitable microorganisms cultured under the specified
conditions is adequately defined. In our view, the examiner
erroneously considered the patentability of the subject matter
of Claims 49-56, 58-63, and 67 under 35 U.S.C. § 112, first
paragraph, 35 U.S.C. § 102, 35 U.S.C. § 103, and for
obviousness-type double patenting without first determining
the full scope of the subject matter claimed.
Generally, before issues related to the patentability of
the claimed subject matter under 35 U.S.C. § 112, first
paragraph, 102, 103, or the court-created doctrine of
obviousness-type double patenting can begin to be considered,
the examiner must determine what is being claimed. See In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971);
[T]he claims must be analyzed first in order to determine
exactly what subject matter they encompass. . . .
The first inquiry therefore is merely to determine
whether the claims do, in fact, set out and circumscribe
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