Appeal No. 95-3606
Application 07/827,691
of the combined teachings of Kremer, Innis I, and Innis II is
a NEW GROUND OF REJECTION UNDER 37 CFR § 1.196(b).
Other Issues
The examiner has not considered the full scope of the
subject matter claimed as we have interpreted it. Here, as in
all cases, the examiner must determine what is being claimed
before patentability under 35 U.S.C. § 102, or 103, or 112,
first paragraph, can begin to be considered. As In re Moore,
439 F.2d 1232, 169 USPQ 236 (CCPA 1971), instructs at 1235,
169 USPQ at 238:
[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
a particular area with a reasonable degree of precision
and particularity. It is here where the definiteness of
the language employed must be analyzed--not in a vacuum,
but always in light of the teachings of the prior art and
of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill
in the pertinent art.
See also In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548
(CCPA 1970)(“Once having ascertained exactly what subject
matter is being claimed, the next inquiry must be into whether
such subject matter is novel.”), and In re Geerdes, 491 F.2d
1260, 1262, 180 USPQ 789, 791 (CCPA 1974)(“Before considering
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