Appeal No. 98-2069
Application No. 29/052,369
our discussion above, our conclusion that the examiner did not
err in rejecting the appealed claim under 35 U.S.C. § 112,
second paragraph, does not depend on the Sussman decision.
On pages 6-8 of the brief and pages 3-4 of the reply
brief, the appellant specifically calls to our attention
numerous design patents and utility patents that issued with10
the word "substantially" appearing in the claim, for the
purpose of showing that the appellant's use of the word
"substantially" is consistent with settled practice in the
PTO. We recognize that design patents and utility patents
10Our research indicates that Manual of Patent Examining
Procedure (MPEP) § 1504.04 "Considerations Under 35 U.S.C.
112" was revised in January of 1995 when original Edition 6 of
the MPEP was published. That revision of the MPEP amended §
1504.04, in pertinent part, to read as follows:
Defects in [design] claim language give rise to
a rejection of the claim under the second paragraph
of
35 U.S.C. 112[.] Typical examples include:
1. Use of phrases in the claim such as
"substantially as shown," "or similar article," "or
the like," or equivalent terminology.
This circumstance may serve to partially explain the numerous
design patents which have issued in the past with the word
"substantially" appearing in the claim and why the examiner
has rejected the appellants' claim.
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