Appeal 2007-0656
Application 10/653,584
For the above reasons, we reverse the Examiner’s § 112, 1st
paragraph, rejection of claims 1-8 as lacking written description for the
claim phrase “thinner than the inner layer.”
35 U.S.C. § 112, 2ND PARAGRAPH REJECTION FOR
INDEFINITENESS OF THE CLAIM PHRASE “SUBSTANTIALLY
ENTIRELY”1
Appellant argues that “substantially” modifies the term “entirely” to
indicate that “the inner layer need not be formed entirely of polypropylene,
but rather must be formed substantially entirely of polypropylene” (Br. 9).
Appellant further contends that the Federal Circuit in Verve, LLC v. Crane
Cams, Inc., 311 F.3d 1116, 62 USPQ2d 1051 (Fed. Cir. 2002) has upheld
the use of the term “substantially” in patent claims (Br. 10).
We have considered all of Appellant’s arguments and are not
persuaded by them for the reasons given below.
1 The Examiner indicates that since “substantially entirely” was added to
distinguish over another reference that has a layer that contains some degree
of polypropylene, “it is essential to the prosecution of the application to be
able to construct what degree of polypropylene purity is meant by the claim
phrase “substantially entirely”” (Answer 12). In light of the significance of
the meaning of the claim phrase “substantially entirely,” the Examiner need
not have dropped the prior art rejection when the language of the claim is
subject to conditional interpretations. Rather, under such circumstances, the
Examiner should make a 35 U.S.C. § 112, 2nd paragraph, rejection to address
the indefiniteness of the claim language and, if possible, make a prior art
rejection (e.g., a § 102 or § 103 rejection) based on a conditional
interpretation of the claim language that would be encompassed by the prior
art. Ex parte Saceman, 27 USPQ2d 1472, 1474 (B.P.A.I. 1993); Ex parte
Ionescu, 222 USPQ 537, 540 (B.P.A.I. 1984). The entry of simultaneous
rejections (e.g., 35 U.S.C. §§ 112, 2nd paragraph, 102 and 103) avoids
piecemeal examination and appellate review. Ionescu, 222 USPQ at 540.
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