Appeal No. 97-2893
Application No. 29/038,948
Furthermore, as we noted on page 22 of our decision, it is
debatable whether or not this data establishes that for which it
is cited.
As pointed out on pages 15-19 of our decision, the cases
cited by the appellants are not controlling and do not support
the appellants' position because none of them addresses the
issue of how inclusion of the word "substantially" in a design
claim impacts upon the requirement of 35 U.S.C. § 112, second
paragraph, that an inventor must particularly point out and
distinctly claim what he regards as his invention. 5
Third, the appellants argue that we overlooked or
misapprehended that the PTO is acting arbitrarily and
capriciously to deprive the appellants of a property right
without due process of law in granting design patents to other
5In fact, our research has not uncovered any final court
or Board decision in which the issue of how inclusion of the
word "substantially" in a design claim impacts upon the
requirement of 35 U.S.C. § 112, second paragraph, was decided.
This includes the cases cited by the examiner to support the
rejection. Thus, there is no binding precedent for this panel
of the Board to follow. See Ex parte Holt, 19 USPQ2d 1211,
1214 (Bd. Pat. App. & Int. 1991).
6
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