Appeal No. 95-1484
Application 08/070,650
under section 112, second paragraph, and proceeded to reject
appellants’ claimed invention under sections 112, first
paragraph, 102, and 103 and court-created obviousness-type
double patenting. We hold that the examiner erred in
considering the patentability of Claims 49-56, 58-63, and 67
under sections 112, first paragraph, 102, and 103 without
first “having ascertained exactly what subject matter is being
claimed.” In re Wilder, 429 F.2d at 450, 166 USPQ at 548.
It is improper for this Board to review a finding of
anticipation under section 102, In re Wilder, 429 F.2d at 450,
166 USPQ at 548, or a holding of unpatentability under
sections 103 and 112, first paragraph, In re Geerdes, 491 F.2d
at 1262, 180 USPQ at 791, based on speculation as to the
meaning of the terms in the claims. In re Steele, 305 F.2d
859, 862, 134 USPQ 292, 295 (CCPA 1962). Accordingly, we do
not at this point review the propriety of the pending
rejections of Claims 49-56, 58-63, and 67 under sections 112,
first paragraph, 102, and 103. Rather, we remand the
application to the examiner for the examiner to determine in
the first instance the meaning of the terms in the claims, the
scope of the subject matter claimed, and whether the claims
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