Appeal No. 1998-1273
Application No. 08/624,148
invention.” Answer, paragraph bridging pages 2-3. The claims
on appeal also stand rejected under the second paragraph of
section 112 “as being indefinite for failing to particularly
point out and distinctly claim the subject matter which
applicant regards [sic, appellants regard] as the invention.”
Answer, page 3. Claims 1-9, 11-17 and 19 stand rejected under
35 U.S.C. § 103 as unpatentable over Dandekar taken with
Keefer and Stönner (id.). Claims 10 and 18 stand rejected
under 35 U.S.C. § 103 as unpatentable over Dandekar taken with
Keefer and Stönner further in view of Kikuchi (Answer, page
4). We reverse all of the examiner’s rejections essentially
for the reasons in the Brief and the reasons set forth below.
OPINION
A. The Rejection under 35 U.S.C. § 112, ¶2
The claimed subject matter should be analyzed for
definiteness under the second paragraph of section 112 and
then for compliance with the first paragraph before the scope
of the claimed subject matter can be compared to the applied
prior art references in a proper analysis under 35 U.S.C. §
103. See In re Angstadt, 537 F.2d 498, 501, 190 USPQ 214, 217
3
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