Appeal No. 1998-1637
Application No. 08/389,119
No prior art has been relied upon by the examiner in the
rejection before us on this appeal.
The appealed claims are rejected under the second
paragraph of 35 U.S.C. § 112 as failing to particularly point
out and distinctly claim the subject matter which the
appellants regard as their invention. On page 3 of the
Answer, the examiner expresses her position as follows:
The terms "high" and low" in claims 1, 7 and 13 are
relative terms which renders these claims in
definite [sic]. The term "high and "low", modifying
speeds are not defined by the claims, the
specification does not provide a standard for
ascertaining the requisite degree, and one of
ordinary skill in the art would not be reasonably
apprised of the scope of the invention.
We cannot sustain the above-noted rejection.
That some claim language may not be precise does not
automatically render a claim offensive to the second paragraph
of § 112. When a word of degree is used, as here, it must be
determined whether the specification provides some standard
for measuring that degree. That is, it must be determined
whether one of ordinary skill in the art would understand what
is claimed when the claim is read in light of the
specification. Seattle Box Co. v. Industrial Crating &
-3-
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