Ex Parte Benzschawel et al - Page 6
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Board of Patent Appeals and Interferences > 2007 > Ex Parte Benzschawel et al - Page 6
3. The phrase “based on a majority of their values being substantially the
same” is recited in the last lines of claims 1 and 8, which lines were added
after the application was filed (18 November 2004). See Response to Non-
Final Action, filed 3 October 2005.
4. Appellants argue that the aforementioned phrase does not render the
claims indefinite under 35 U.S.C. § 112, second paragraph, because “the
term ‘substantially’ is well known the art and recognized by the U.S. Patent
and Trademark Office as accepted terminology.” Br. 3. According to
Appellants, “the term ‘substantially’ is a broad term that is used here with
another term to describe a particular characteristic of the claimed invention.
Here, “substantially” is used with “the same” to describe the similarity of the
values . . . . The Patent Office and the Federal Circuit have upheld
“substantially” as a definite term, even when paired with a characteristic
such as “the same.” Br. 4.
5. The Examiner responds by conceding that the term “substantially”
may be a definite term but in the context of the instant claims, when read in
light of the specification, one of ordinary skill in the art would not
understand how to construe the term.
The point of these clarifications is that while the word
“substantially” may be definite, it is only so when considered in light
of the specification. A review of Appellants’ specification, however,
fails to provide enlightenment as to how one of ordinary skill in the
art would understand Appellants’ use of the word. Appellants provide
no citation to the specification to clarify, and a thorough review of the
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Last modified: November 3, 2007