Appeal No. 1995-0770
Application No. 07/929,457
Claims 1-21 and 28 stand rejected under 35 U.S.C. 112, second paragraph, for
indefiniteness. The examiner found the use of the term “substantially constant” to be
indefinite. Claims 1-21 and 28 stand rejected under 35 U.S.C. 112, first paragraph, for
lack of support in the specification. The examiner found that an amendment introducing
“substantially constant” to modify a temperature in the claims was not supported in the
specification as filed.
Because the two rejections under the first and second paragraphs of 35 U.S.C.
§ 112 are based on the meaning of the term “substantially constant,” our first inquiry is to
determine if the claims comply with the requirements of the second paragraph. If the
claims in fact are particular and definite, the analysis then turns to the first paragraph of the
statute. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971).
“Substantially constant” is a term of degree that was not expressly defined by the
specification. Its acceptability depends on whether one of ordinary skill in the art would
understand what is claimed. W. L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1557, 220 USPQ 303, 316 (Fed, Cir, 1983), cert. denied, 469 U.S. 851 (1984); Seattle
Box Co. v. Industrial Crating & Packing, 731 F.2d 818, 826, 221 USPQ 568, 573-74 (Fed.
Cir. 1984). See also Hybritech, Inc. V. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1385,
231 USPQ 81, 95 (Fed Cir. 1986) (“the claims, read in light of the specification,
reasonably apprise those skilled in the art and are as precise as the subject matter
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