Appeal No. 1998-3232 Page 5
Application No. 08/738,920
the percentage of unreacted 1-olefin present such that a
sufficient amount of polymer dissolves in the light phase to
result in plugging of certain equipment. Hence, the claim
language before us herein is somewhat different from the claim
language before the Board in previously decided appeal No. 95-
1272. Appellant argues against the propriety of the
examiner’s § 103 rejection based at least in part, on that
newly added claim language (brief, page 3). Thus, this appeal
requires us to fully understand the scope of the3
claimed terminology pertaining to the concentration of
unreacted 1-olefin and amount of polymer dissolved in the
light phase as required by the claims under appeal.
Upon review of the entire record, we determine that one
skilled in the relevant art would not be able to ascertain the
scope of each of the appealed claims because no reasonably
definite meaning can be ascribed to the language appearing in
Analysis of whether a claim is patentable over the prior art under 353
U.S.C. § 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).
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