Appeal No. 96-2897
Application 08/050,315
in light of the teaching in the specification as a whole and
give the term the broadest reasonable interpretation which is
consistent with the invention described in the specification,
as In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989),
directs at 321, 13 USPQ2d at 1322, the examiner focussed on
appellants’ limited definition of the term based on the active
oils the “specification exemplifies” (Br., p. 6, first full
sentence). In so doing, the examiner erred. The examiner
should have fairly considered what the term “active oil” would
have meant to persons having ordinary skill in the art upon
reading the description of the invention in the specification
as a whole. We must remand this case so to allow the examiner
to interpret the claim language and determine the scope of
appellants’ claims in accordance with established patent law.
Only after having ascertained exactly what subject matter is
being claimed should the examiner consider the patentability
of the claimed subject matter under 35 U.S.C. §§ 102 and 103.
“Once having ascertained exactly what subject matter is being
claimed, the next inquiry must be into whether such subject
matter is novel.” In re Wilder, 429 F.2d 447, 450, 166 USPQ
545, 548 (CCPA 1970). “Before considering the rejections
under 35 U.S.C. 103 . . . we must first decide . . . [what]
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