Appeal No. 98-2069
Application No. 29/052,369
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. 9
On page 8 of the brief, the appellant criticizes the
examiner's reliance on Ex parte Sussman, 8 USPQ2d 1443 (Bd.
Pat. App. & Int. 1988) in support of the rejection. According
to the appellant, the footnote of Sussman relied upon by the
examiner is dicta and inconsistent with "the settled law of
the Supreme Court of the United States, the predecessor court
of the Federal Circuit Court of Appeals and other courts that
the use of 'substantially' is proper in the single claim to an
ornamental design in a design patent." As is apparent from
9In 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).
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