Ex parte HOWSE - Page 7




               Appeal No. 1997-2338                                                                                             
               Application No. 08/173,376                                                                                       

                      In reconsidering the patentability of the claims of this application we would urge the                    
               examiner to first ascertain the scope of the claimed subject matter.   A patentability                           
               determination must begin with the scope of the claims being ascertained.  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).  (“Analysis begins with a key legal question--what is the                          
               invention claimed?”).  In similar fashion, the court stated in In re Wilder,                                     

               429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970), "[t]he first inquiry must be into                              
               exactly what the claims define."                                                                                 
                      In the present application, this effort should begin with a determination of just what is                 
               intended by the phrase “to transport a greater amount” as used in claim 52.  From our                            
               review of the specification it is not readily apparent what this language intends to compare                     
               the claimed invention with.  Similarly, claim 61 provides that the “behavior modifying                           
               substance” is comprised of “the structural equivalent of at least one component of the                           
               alarm pheromone.”  The specification does not appear to provide guidance as to how this                          
               phrase should be interpreted by one skilled in this art trying to ascertain the scope of the                     
               claimed invention.  We would urge the examiner and appellants to work together to                                
               determine the meaning or intent of these two phrases so as to permit a meaningful                                
               comparison of the claimed invention with the prior art.                                                          




                                                          Summary                                                               


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