Ex parte MALIK et al. - Page 6




          Appeal No. 97-0677                                                          
          Application No. 08/312,710                                                  


          a determination of the scope of the claim.  The properly                    
          interpreted claim must then be compared with the prior art.                 
          Claim interpretation must begin with the language of the claim              
          itself.  See Smithkline Diagnostics, Inc. v. Helena                         
          Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472                  
          (Fed. Cir. 1988).                                                           


               Our review of independent claim 1 reveals that we are                  
          unable to derive a proper understanding of the scope and                    
          content thereof.  Specifically, the terminology "so that said               
          body portion outside surface is positioned in a tangential                  
          plane in close proximity to a tangential plane along said                   
          handling ring outer surface" in independent claim 1 raises a                
          definiteness issue under 35 U.S.C.  112, second paragraph.                 


               The terminology "in close proximity" is a term of degree.              
          When a word of degree is used, such as the terminology "in                  
          close proximity" in claim 1, it is necessary to determine                   
          whether the specification provides some standard for measuring              
          that degree.  See Seattle Box Company, Inc. v. Industrial                   


                                          6                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007