Appeal 2007-0656
Application 10/653,584
(Answer 6). Moreover, as the Examiner indicates, the definiteness of the
term “substantially” is determined on a case-by-case basis, such that “a
blanket transfer of the holding of a court [i.e., the Verve decision] regarding
the meaning of “substantially” is not possible” (Answer 12).
For the foregoing reasons, we affirm the Examiner’s § 112, 2nd
paragraph, rejection of claims 1-8 for indefiniteness of the claim phrase
“substantially entirely.”
35 U.S.C. § 112, 1ST PARAGRAPH, REJECTION FOR LACK OF
WRITTEN DESCRIPTION FOR THE CLAIM LANGUAGE
“SUBSTANTIALLY ENTIRELY”
Because we find the claim phrase “substantially entirely” is indefinite
under 35 U.S.C. § 112, 2nd paragraph, we cannot determine whether such
claim language is supported by the written description. Any attempt by the
Examiner or the Board to determine whether the claim phrase “substantially
entirely” is supported by Appellant’s written description would be
improperly based upon speculation as to the meaning of the claim phrase.
In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962).
Therefore, we cannot address the merits of Examiner’s 35 U.S.C. § 112, 1st
paragraph, rejection concerning the claim phrase “substantially entirely” as
lacking written description. We procedurally reverse the Examiner’s 35
U.S.C. § 112, 1st paragraph, rejection as being improperly based on
speculation as to the meaning of the claim phrase “substantially entirely.”
Id.
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