Appeal No. 1998-2733
Application 08/718,613
We begin our consideration of this issue with the common dictionary meaning of the term
“definition:”
1. The act of stating a precise meaning or significance. 2. The statement or meaning of a
word phrase or term. 3. The act of making clear and distinct . . . 4. The state of being closely
outlined or determined. 5. A determination of outline, extent or limits . . . .”
The American Heritage Dictionary Second College Edition 375 (Boston, Houghton Mifflin
Company, 1982). There is no place in a “definition” for equivocation and arbitrariness. It is clear that a
“definition” is required in order to define a claimed invention in compliance with 35 U.S.C. § 112,
second paragraph: “The specification shall conclude with one or more claims particularly pointing out
and distinctly claiming the subject matter which applicant regards as his invention.” See Morris, 127
F.3d at 1055-56, 44 USPQ2d at 1029.
We determine that the language “to exclude those salts which are incompatible with or
undesirable in formulations for polymers having urethane and/or urea groups” on page 8 of the
specification begs the question of whose and/or which standard of “incompatibility” and of
“undesirability” will be applied to determine whether a non-volatile metal salt is to be excluded from the
common meaning of the term. Indeed, Ukai discloses that the polyurethane formulations containing
thiocyanate salts had “good molding properties” and provided moldings having properties “necessary
for automotive components” and “a superior finish after being [electrostatically] painted” (page 7; see
also page 2). There is no indication that in the formulations of Ukai, the thiocyanate salt is either
“incompatible with or undesirable” in at least the disclosed “formulations for a polymer having urethane .
. . groups,” and thus would reasonably appear to flunk the exclusion test set forth in appellants’
specification.
However, appellants urge, on the basis of evidence involving RIM formulations which are
related to the teachings of Ukai solely in that a thiocyanate salt per se is used, that unsatisfactory results
are shown and would carry over to “non-Rim formulations” even after admitting that a formulation,
otherwise completely different from that of Ukai, was selected because an undesirable result was
“likely to be more pronounced, and therefore more demonstrative of the undesired effect” (brief, page
5). As pointed out by the examiner, the thiocyanate anion, SCN-, is at once disclosed in the written
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