Appeal 2007-0656
Application 10/653,584
Definiteness problems often arise when words of degree (e.g.,
“substantially”) are used in a claim. Seattle Box Co., Inc. v. Indus. Crating
& Pkg., Inc., 731 F.2d 818, 826, 221 USPQ2d 568, 573 (Fed. Cir. 1984).
That some claim language may not be precise, however, does not
automatically render a claim invalid. Seattle Box, 731 F.2d at 827,
221 USPQ2d at 574. When a word of degree is used, it must be determined
whether the patent's specification provides some standard for measuring that
degree. Id. It must be decided, that is, whether one of ordinary skill in the
art would understand what is claimed when the claim is read in light of the
specification. Id.
In the present case, Appellant’s Specification fails to provide any
standard for measuring the “degree” of the term “substantially entirely.” Id.
Appellant’s circular argument regarding the meaning of the phrase
“substantially entirely” (Br. 9) underscores the fact that no guidance has
been provided for determining the degree of the claim phrase. Specifically,
rather than indicate where Appellant discloses the meaning of the claim
phrase “substantially entirely,” Appellant circularly argues that
“substantially entirely” means that “the inner layer need not be formed
entirely of polypropylene, but rather must be formed substantially entirely of
polypropylene” (Br. 9).
Appellant’s argument that the use of “substantially” in claims has
been upheld by the Federal Circuit in the Verve decision is misplaced.
Verve, 311 F.3d at 1119, 62 USPQ2d at 1054. The Examiner does not
contend that using “substantially” is improper. Rather, the Examiner
determines that in this case, Appellant has not provided any guidance in his
Specification as to the meaning of the claim phrase “substantially entirely”
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