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 7Page: Previous 1 2 3 4 5 6 7 8 9 NextLast modified: November 3, 2007