Appeal No. 97-1983
Application No. 29/038,982
1988) in rejecting the claim. First, we did not rely on MPEP §
1504.04 in arriving at our decision. Second, we expressly
stated on page 20 of our decision that we did not rely on
Sussman in arriving at our conclusion that the standing
rejection is sustainable. Third, it is not clear what "binding
precedent" MPEP § 1504.04 or Sussman violate.6
Finally, we simply disagree with appellants' final point
that our decision, if correct, renders thousands of unexpired
design and utility patents having the word "substantially" in
the claim invalid. Our decision makes no such sweeping holding.
Rather, our decision stands for the proposition that the
definiteness of a design claim including language such as
"substantially as shown and described" must be resolved in the
same way definiteness issues are resolved in any other
application involving words of degree, that is, on the basis of
the particular facts of the involved application (i.e., on a
case-by-case basis).
6MPEP § 1504.04 has been revised to delete the reference
to Sussman.
8
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