Appeal No. 96-2905
Application No. 29/008,076
171). Compliance with §§ 112 and 171 requires analysis of the
statutes and interpretation of case law. Mere reference to
possibly contrary decisions of an examiner in other
applications, applications in which the issue raised in this
case was not even addressed, are not helpful in this analysis.
Furthermore, as we noted on page 22 of our decision, it is
debatable whether or not this data establishes that for which
it is cited.
As pointed out on pages 15-19 of our decision, the cases
cited by the appellant are not controlling and do not support
the appellant's position because none of them addresses the
issue of how inclusion of the word "substantially" in a design
claim impacts upon the requirement of 35 U.S.C. § 112, second
paragraph, that an inventor must particularly point out and
distinctly claim what he regards as his invention. 5
5In fact, our research has not uncovered any final court
or Board decision in which the issue of how inclusion of the
word "substantially" in a design claim impacts upon the
requirement of 35 U.S.C. § 112, second paragraph, was decided.
This includes the cases cited by the examiner to support the
rejection. Thus, there is no binding precedent for this panel
of the Board to follow. See Ex parte Holt, 19 USPQ2d 1211,
1214 (Bd. Pat. App. & Int. 1991).
6
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