Appeal No. 2002-2136 Page 4
Application No. 09/761,077
(Paper No. 10) for the examiner's complete reasoning in support of the rejection and to
the brief and reply brief (Paper Nos. 9 and 11) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claim, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
Before addressing the examiner's rejections based upon prior art, it is essential
that the claimed subject matter be fully understood. Analysis of whether a claim is
patentable over the prior art under 35 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). Accordingly, we will initially direct our attention
to appellants' claim 2 to derive an understanding of the scope and content thereof.
The preamble of appellant’s claim 2 appears to indicate that the claim is directed
to an article of manufacture for making a manual after hours bank deposit and, indeed,
the first paragraph of claim 2, as reproduced supra, recites the article illustrated in
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