Appeal No. 1997-2436
Application No. 08/232,014
we are of the opinion that claims 3-50, fail to satisfy the requirements of 35 U.S.C. § 112,
second paragraph. Since the metes and bounds of the claim are unclear, we do not reach
the rejections of the claims under 35 U.S.C. § 102, 35 U.S.C. § 103, or under the judicial
doctrine of obvious double patenting. In making a patentability determination, “[a]nalysis
begins with a key legal question -- what is the invention claimed?” since “[c]laim
interpretation . . . will normally control the remainder of the decisional process,” Panduit
Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68,
1 USPQ2d 1593, 1597 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987). Where as here, a
reasonable interpretation of the claim can not be made, if follows that it is impossible to
compare the claimed invention with the prior art. See Graham v. John Deere Co., 383 U.S.
1,17, 148 USPQ 459, 467 (1966)("Under § 103, the scope and content of the prior art are
to be determined; differences between the prior art and the claims at issue are to be
ascertained; and the level of ordinary skill in the pertinent art resolved. Against this
background, the obviousness or nonobviousness of the subject matter is determined."). In
order to compare the claimed subject matter with the relevant prior art we would first have
to speculate or make assumptions as to what is intended by the claim. However, since a
rejection under 35 U.S.C. § 102 or 35 U.S.C. § 103, and similarly the rejection as to
obvious double patenting, can not be based on speculations and assumptions, (See In re
Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295-96 (CCPA 1962) and In re Wilson,
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