Ex parte DAMS - Page 6




          Appeal No. 1997-2193                                                        
          Application 07/986,648                                                      
               In In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971),               
          one of the predecessors to our reviewing court enunciated the               
          test for determining whether or not an application for patent               
          complied with the requirements of 35 U.S.C. § 112, first                    
          paragraph.  As the court noted, In re Moore, 439 F.2d at 1235,              
          169 USPQ at 238:                                                            
               Any analysis in this regard should begin with the                      
               determination of whether the claims satisfy the                        
               requirements of the second paragraph. It may appear                    
               awkward at first to consider the two paragraphs in                     
               inverse order but it should be realized that when                      
               the first paragraph speaks of "the invention", it                      
               can only be referring to that invention which the                      
               applicant wishes to have protected by the patent                       
               grant, i.e., the claimed invention. For this reason                    
               the claims must be analyzed first in order to                          
               determine exactly what subject matter they                             
               encompass. The subject matter there set out must be                    
               presumed, in the absence of evidence to the                            
               contrary, to be that "which the applicant regards as                   
               his invention.                                                         
          Thus, it is clear the examiner, in the first instance, must                 
          analyze the claims for compliance with paragraph 2 of the                   
          statute before addressing questions arising under the first                 
          paragraph of the statute.                                                   
               Accordingly, before the examiner addressed the question                
          of whether or not appellants' disclosure was enabling for the               
          claimed subject matter, the examiner should have first                      
          ascertained the metes and bounds of the claim terminology as                
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