Appeal No. 95-0972 Page 11
Application No. 07/650,453
is necessary to determine whether the specification provides
some standard for measuring that degree. See Seattle Box
Company, Inc. v. Industrial Crating & Packing, Inc., 731 F.2d
818, 826, 221 USPQ 568, 573-74 (Fed. Cir. 1984). We have
reviewed the appellant's disclosure to help us determine the
meaning of the above-noted terminology from claim 1. However,
the disclosure does not provide explicit guidelines defining
the terminology "near-surface" (claim 1). Furthermore, it is
our view that there are no guidelines that would be implicit
to one skilled in the art defining the term "near-surface"
that would enable one skilled in the art to ascertain what is
meant by thereby. For example, one cannot ascertain if ten
feet below ground is "near-surface." Absent such guidelines,
we are of the opinion that a skilled person would not be able
to determine the metes and bounds of the claimed invention
with the precision required by the second paragraph of 35
U.S.C. § 112. See In re Hammack, 427 F.2d 1378, 1382, 166
USPQ 204, 208 (CCPA 1970).
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