Appeal No. 96-2871
Application 08/352,964
Rejection under 35 U.S.C. § 112, second paragraph
Definiteness problems often arise when words of degree
are used in a claim. That some claim language may not be
precise, however, does not automatically render a claim
invalid. When a word of degree is used we must determine
whether the specification provides some standard for measuring
that degree. Furthermore, even if some experimentation is
needed to determine limits, the claims would not necessarily
be unpatentable under section 112. Seattle Box Co. v.
Industrial Crating & Packing, Inc., 731 F.2d 818, 221 USPQ 568
(Fed. Cir. 1984).
The Examiner has held that the term “substantially”
renders the claims indefinite, in that the metes and bounds of
Appellants’ claimed invention are unknown. Looking at the
claims we find in claim 1, “substantially coaxially with said
aperture” and “a space substantially enclosing”; in claim 2,
“a footprint substantially coinciding with”; in claim 5,
“being substantially perpendicular to said axis”; and in claim
15, “substantially enclosing a space” and “substantially
preventing pressurization”. A review of the specification
reveals no standard of measure of degree for these
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