Appeal No. 1999-0628 Page 4
Application No. 08/806,503
on said external set of splines, and a seal is mounted to the transmission housings
and transfer case and contacting said output shaft.3
Before addressing the examiner's rejections based upon prior art, it is essential that the
claimed subject matter be fully understood. Analysis of whether a claim is patentable over the
prior art under 35 U.S.C. §§ 102 and 103 begins with a determination of the scope of the
claim. The properly interpreted claim must then be compared with the prior art. Claim
interpretation must begin with the language of the claim itself. See Smithkline Diagnostics, Inc.
v. Helena Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed. Cir. 1988).
Accordingly, we will initially direct our attention to the appellant's claims to derive an
understanding of the scope and content thereof.
Specifically, we note that each of the independent claims requires, inter alia,
an output shaft having only one set of splines adapted to connect with a yoke and
formed on the end thereof, and only one yoke with said only one yoke being
mounted on the only one set of splines of the output shaft [emphasis added].4
3References in the claim to "said housings and transfer case" lack strict antecedent basis and should
apparently be "said housing or transfer case." Although this inconsistency does not render the scope of the claims
indefinite, it is deserving of correction in the event of further prosecution before the examiner.
4This language was first introduced into the claims in a preliminary amendment filed July 17, 1995 (Paper
No. 5) in parent Application No. 08/502,979 with the request for filing a continuation of earlier Application No.
08/161,045 under 37 CFR § 1.60, as then in effect. Since (1) the original application papers for Application No.
08/502,979 were filed under 37 CFR § 1.60 and identified the application as a "continuation" (not continuation-in-
part) of the earlier application, (2) the 37 CFR § 1.63 declaration filed September 11, 1995 in Application No.
08/502,979 did not refer to this preliminary amendment, (3) the February 24, 1997 request for filing an application
under 37 CFR § 1.62, as then in effect, (Paper No. 16) identified the instant application as a "continuation" of parent
Application No. 08/502,979 and (4) no supplemental declaration under 37 CFR § 1.67 referring to the preliminary
amendment filed July 17, 1995 has been filed, the preliminary amendment in question does not form part of the
original disclosure of the application. See Manual of Patent Examining Procedure (MPEP) § 608.04(b).
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