Appeal No. 96-2905
Application No. 29/008,076
PAK, Administrative Patent Judge, dissenting.
I continue to respectfully dissent for the reasons set
forth in our dissenting opinion in the earlier decision. For
purposes of elucidation, however, I add the following comments
on the majority's opinion.
I initially observe that the majority's decision is
filled with contradictions. On the one hand, the majority
states at page 8 of this decision that:
[W]e simply disagree with the appellant's argument that
our decision, if correct, renders thousands of unexpired
design and utility patents having the word
"substantially" in the claim invalid. Our decision makes
no such sweeping holding. Rather, our decision stands
for the proposition that the definiteness of a design
claim including language such as "substantially as shown
and described" must be resolved in the same way
definiteness issues are resolved in any other application
involving words of degree, that is, on the basis of the
particular facts of the involved application (i.e., on a
case-by-case basis).
On the other hand, the majority takes the position that
the use of the "substantially" language in a design
application claim is per se indefinite. See the earlier
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