Appeal No. 1996-1141
Application 08/109,166
The examiner argues “substantially reduced” in claims 24 and 25 is subjective and
thus unclear (answer, page 3). Furthermore, the examiner argues that “since the phrase
appears critical to the inventive concept, it should be precise” (answer, page 5).
Appellants respond by arguing that “35 U.S.C. § 112, second paragraph, does not require
exactitude, but rather requires that one of ordinary skill in the art be reasonably apprised of
the claimed invention” (Brief, page 10). Appellants argue further that “one of ordinary skill
in the art would understand that there is always some finite degree of risk when dealing
with pyrophorics, and that a method which is substantially without risk of explosion would
be, for example, a method having an acceptable risk within common commercial
standards of safety.” We, like appellants, do not believe that the language “substantially
reduced” used in the phrase “substantially reduced risk of explosion” violates 35 U.S.C. §
112, second paragraph.
The legal standard for definiteness is whether a claim reasonably apprises those of
skill in the art of its scope. In re Warmerdam, 33 F.2d 1354, 361, 31 USPQ2d 1754, 1759
(Fed. Cir. 1994). If the claims, read in light of the specifications, reasonably apprise those
skilled in the art both of the utilization and scope of the invention, and if the language is as
precise as the subject matter permits, the courts can demand no more. Shatterproof
Glass Corp. v. Libby-Ownes Ford. Co., 758 F.2d 613, 624, 225 USPQ 634, 641 (Fed.
Cir.) cert. denied, 474 U.S. 976 (1985).
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