Appeal No. 1995-2297
Application No. 07/797,493
Therefore, we affirm the examiner’s rejection of claims 4 and 6-8 over Reisner, Lubin or
Kamel.
Claims 1 and 2, however, are commensurate in scope to appellant’s evidence
establishing an unobvious difference between the claimed product and the prior art
product. Therefore, we reverse the examiner’s rejection of claims 1 and 2 over Reisner,
Lubin and Kamel.
III. The rejection of claims 13 and 14 under 35 U.S.C. § 103 over Reisner, Lubin
or Kamel.
In our view, the examiner erroneously considered the patentability of the subject
matter of claims 13 and 14 under 35 U.S.C. § 103 without first determining the full scope of
the subject matter claimed.
Generally, before issues related to the patentability of the claimed subject matter
can begin to be considered, the examiner must determine what is being claimed.
[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
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