Appeal No. 93-4108
Application 07/552,880
Rejection I
The examiner is concerned whether one skilled in the art could determine the metes
and bounds of the phrase “substantially pure F hybrid population of plants” as used in
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claims 19 through 42. In setting forth the rejection at page 3 of the Examiner’s Answer, the
examiner notes “the absence of a recitation in the specification of the meaning of the terms
[sic] ‘substantially’ when employed in the claimed context.” Appellants argue in the
paragraph bridging pages 7-8 of the Appeal Brief that the questioned phrase means
“something in the 90-99% range and as such is commonly accepted in the trade.”
Both the examiner and appellants appear to be operating under the belief that one
must be able to convert the word “substantially” to a finite numerical range before the use
of that word in a patent claim can be considered proper. This is incorrect. As set forth in In
re Mattison, 509 F.2d 563, 565, 184 USPQ 484, 486 (CCPA 1975), knowledge of a
precise numerical range encompassed by a claim requirement which includes the word
“substantially” is not needed in order to comply with 35 U.S.C. § 112, second paragraph.
Thus, while we expressly disagree with appellants that this claim requirement means
“something in the 90-99% range,” absent a more fact based explanation from the
examiner, we do not find that the examiner has established in the first instance that one
skilled in the art would be unable to reasonably understand the metes and bounds of these
claims.
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