Appeal No. 2006-0449
Application 10/232,644
description in the specification in a manner which comports with its common meaning in context
of “[t]o soak . . . in a marinade,”2 and we find no basis anywhere in the record which establishes
the extent, that is, time and temperature, to which any person would soak any “meat” in any
“marinade,” which we determine to be a matter of imparting desired flavor(s).
Turning now to the phrase “without allowing any substantial time for marination” found
in each of claims 1, 3, 13 and 15, although for different method steps (see above pp. 3-4). The
term “substantially” is a term of degree, and thus, the written description in the specification
must either provide a definition or general guidelines and examples sufficient as a standard to
enable a person of ordinary skill in the art to determine the degree of “marination” time thus
encompassed by the claim language, or this term will be given its ordinary meaning. See Morris,
127 F.3d at 1054-55, 44 USPQ2d at 1027; York Prods., Inc. v. Central Tractor Farm & Family
Ctr., 99 F.3d 1568, 1572-73, 40 USPQ2d 1619, 1622-23 (Fed. Cir. 1996) (“In this case, the
patent discloses no novel use of claim words. Ordinarily, therefore, ‘substantially’ means
‘considerable in . . . extent,’ American Heritage Dictionary Second College Edition 1213
(2d ed. 1982), or ‘largely but not wholly that which is specified,’ Webster’s Ninth New
Collegiate Dictionary 1176 (9th ed. 1983).”); Seattle Box Co., Inc. v. Industrial Crating &
Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 573-74 (Fed. Cir. 1984) (“Definiteness
problems arise when words of degree are used. That some claim language may not be precise,
however, does not automatically render a claim invalid. When a word of degree is used . . . [it]
must [be determined] whether the patent’s specification provides some standard for measuring
that degree.”); In re Mattison, 509 F.2d 563, 564-65, 184 USPQ 484, 486 (CCPA 1975)
(“substantially increase the efficiency of the compound as a copper extractant”); cf. In re Marosi,
710 F.2d 799, 802-03, 218 USPQ 289, 292 (Fed. Cir. 1983) (“essentially free of alkali metal”).
Appellant admits that the subject phrase “is not explicitly defined” in the specification,
but argues that “Appellant’s first example (Figure 1) uses a 2 minute marination time from
immersion in vinegar to freezing, which obtains significantly better results than the 25 minutes
of the second example,” with respect to the time periods of claims 1 and 13 as well as of
claims 3 and 15, in support of the contention that “[s]ince the example of two minutes from
2 See generally, The American Heritage Dictionary Of The English Language 1070; The
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