Appeal 2007-0114
Application 10/990,960
broad term that may be definite. FF 5. Just because a term is broad, does
not mean it is indefinite. In re Borkowski, 422 F.2d 904, 908, 164 USPQ
642, 645 (1970).
However, the question is not whether the term “substantially” is per se
definite, but whether the claims set out and circumscribe a particular area
with a reasonable degree of precision and particularity when read in light of
the application disclosure as they would be interpreted by one of ordinary
skill in the art. Specifically, the question here is whether the phrase “based
on a majority of their values being substantially the same” as used in the
context of the claims is indefinite.
When a claim uses a word of degree, like “substantially,” the
specification must provide some standard for measuring that degree. Here
the Board must decide whether one of ordinary skill in the art would
understand what is claimed when the claim is read in light of the
specification. See Seattle Box Co. v. Industrial Crating & Packing, Inc., 731
F.2d 818, 826, 221 USPQ 568, 573-74 (Fed. Cir. 1984). The Examiner finds
that the phrase “based on a majority of their values being substantially the
9
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: September 9, 2013