Ex Parte SCARINGE et al - Page 11




              Appeal No. 1997-4234                                                                                           
              Application No. 08/423,211                                                                                     


              citing: Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed. Cir.                               
              1995).  Thus, as we have stated above, all that is necessary to satisfy the description                        
              requirement of 35 U.S.C. § 112, first paragraph, is a written description of the presently                     
              claimed invention which would convey to those skilled in the art, that, as of the filing                       
              date the applicants were in possession of the invention.   Vas-Cath Inc. v. Makurar,                           
              supra.                                                                                                         
                                      The rejections under 35 U.S.C. § 102(e)/103                                            
                      For reasons stated supra in our new ground of rejection under 37 CFR                                   
              § 1.196(b), we are of the opinion that claims 1-27 and 29, fail to satisfy the                                 
              requirements of 35 U.S.C. § 112, second paragraph.  Since the metes and bounds of                              
              these claims are unclear, we do not reach the rejections under 35 U.S.C. § 102(e) or 35                        
              U.S.C. § 103 as it relates to these claims.  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                      

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