Appeal No. 2003-0454 Page 4
Application No. 09/644,734
Our review of independent claims 1, 16 and 29 reveals that we are unable to
derive a proper understanding of the scope and content thereof. Specifically, the
terminology "substantially the same" as used in independent claims 1, 16 and 29 raises
a definiteness issue under 35 U.S.C. § 112, second paragraph.
The term "substantially" is a term of degree. When a word of degree is used,
such as the term "substantially" in claims 1, 16 and 29, it is necessary to determine
whether the specification provides some standard for measuring that degree. See
Seattle Box Company, Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221
USPQ 568, 573-74 (Fed. Cir. 1984).
Admittedly, the fact that some claim language, such as the term of degree
mentioned supra, may not be precise, does not automatically render the claim indefinite
under the second paragraph of § 112. Seattle Box, supra. Nevertheless, the need to
cover what might constitute insignificant variations of an invention does not amount to a
license to resort to the unbridled use of such terms without appropriate constraints to
guard against the potential use of such terms as the proverbial nose of wax.2
2 See White v. Dunbar, 119 U.S. 47, 51-52 (1886) and Townsend Engineering Co. v. HiTec Co.
Ltd., 829 F.2d 1086, 1089-91, 4 USPQ2d 1136, 1139-40 (Fed. Cir. 1987).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007