Appeal No. 98-2069
Application No. 29/052,369
paragraph, for the appellant's design claim to include the
word "substantially" in the absence of some standard or
guideline in the specification apprising the designer of
ordinary skill just what that term encompasses. If we were to
accept the appellant's argument, infringement in designs would
occur not only when a competing design is substantially the
same as a patented design, but also when a competing design is
substantially the same as an undisclosed and indeterminant
variation of a patented design.
Furthermore, we are not persuaded by the position that
the presence of "substantially" in the present design claim
merely makes explicit what is implicit in every design claim
for the purpose of defining the boundaries of protection in
infringement. While the word "substantially" is used in the
test for infringement of a design patent, it is not obvious to
us how this implicitly enlarges the scope of the claim in
determining whether a claim is patentable over the prior art
under 35 U.S.C. §§ 102 and 103. As stated in In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970), "[a]ll
words in a claim must be considered in judging the
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