Appeal No. 97-2893
Application No. 29/038,948
appellants are apparently attempting to make is that the
circumstance that numerous design patents issued with the word
"substantially" in the claims since the inception of the rule
establishes that the appellants' use of the word "substantially"
is consistent with the settled practice of the PTO. The second
point the appellants are apparently seeking to make is that the
two court cases establish that the appellants' use of the word
"substantially" does not render the claim indefinite under the
second paragraph of 35 U.S.C. § 112.
As pointed out on pages 20-22 of our decision, we recognize
that design patents have been issued with the word
"substantially" appearing in the claim. However, the appellants
have not cited any authority which holds that the issuance of a
patent has any significant precedential value. In evaluating
compliance with 35 U.S.C. §§ 112 and 171, each design
application must be evaluated on the record developed in the
Patent and Trademark Office (PTO). See In re Gyurik, 596 F.2d
1012, 1018 n.15, 201 USPQ 552, 558 n.15 (CCPA 1979) and In re
Phillips, 315 F.2d 943, 945, 137 USPQ 369, 370 (CCPA 1963). To
the extent any error has been made in the rejection or issuance
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