Appeal No. 2001-1860
Application No. 08/993,104
allegation does not speak to how far from “exactly” the recitation “substantially
simultaneously” may reach.
We thus agree with the examiner that the claims fail to pass muster under 35
U.S.C. § 112, second paragraph because of the undetermined scope of the term
“substantially,” as modifying the words “asynchronously,” “simultaneously,” and
“predetermined.” Our determination is not based on the view that it cannot be shown
that the artisan would understand the bounds of protection corresponding to the use of
the term “substantially” in the claims. Our conclusion that the present use of
“substantially” in the claims renders the subject matter indefinite is based on the lack of
guidance provided by the instant specification and the lack of evidence provided by
appellants that specific ranges, specific examples, or other guidance that might be
provided by a disclosure is not essential for the artisan’s understanding of the present
claim scope. Understanding of the scope of “substantially” may be derived from
extrinsic evidence. Verve, LLC v. Crane Cams, Inc., No. 01-1417, 2002 U.S. App.
LEXIS 23565, at *7-8 (Fed. Cir. Nov. 14, 2002) (remanding case for recourse to
extrinsic evidence concerning the usage and understanding of the term “substantially”
in relevant context).
We also note that the Brief’s Summary of the Invention (at 4-5) does not explain
how the scope of the claimed subject matter may be affected by occurrence of the term
“substantially.” Moreover, appellants refer to a “substantially predetermined rate” as
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