Appeal No. 2001-0421
Application 08/926,835
In making a patentability determination, analysis must begin
with the 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, 1567-58, 1 USPQ2d 1593, 1597 (Fed.
Cir.), cert. denied, 481 U.S. 1052 (1987). Where a reasonable
interpretation of the claims cannot be made, it 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 are to be ascertained; and the level of ordinary
skill in the pertinent art resolved. Against this background,
the obviousness or nonobviousness of the subject matter is
determined.”)
In order to consider the merits of the Examiner’s rejection,
we would first have to compare the claimed subject matter with
the relevant prior art which would necessarily require that we
speculate or make assumptions as to what is intended by the
claims. Thus, we have decided to vacate the examiner’s rejection
and enter a new ground of rejection under 37 CFR § 1.196(b).
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