Appeal No. 97-3290
Application 08/465,896
Initially, we note that in a situation such as the
present one, wherein claims are rejected under both the first
and second paragraphs of 35 U.S.C. § 112, the definiteness of
the claims are
addressed prior to an analysis of whether the claimed subject
matter is supported by an enabling disclosure. See In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
Accordingly, at the outset, we determine that claim 21,
considered as a whole, is indefinite, for reasons articulated,
infra. However, following the pattern of the examiner and
appellant in discussing the first paragraph issue first and
the indefiniteness issue second, we likewise turn now to the
first paragraph issue.
The § 112, first paragraph rejection
We affirm this rejection.
The examiner is of the view (final rejection, page 2 and
answer, pages 3 through 5) that claim 21, in particular, is
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