Ex Parte OLSON - Page 4




          Appeal No. 97-2481                                                          
          Application No. 08/480,964                                                  


          indefinite if the specification provides some standard for                  
          measuring that degree.  Seattle Box Co., Inc. v. Industrial                 
          Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 573-74            
          (Fed. Cir. 1984).  Here, however, we do not find any such                   
          standard in appellant’s specification.  The only disclosure in              
          the specification concerning an increase in inductance is found             
          on page 6, line 23, to page 7, line 7, wherein it is stated that            
          simulations of the magnetic performance of a filter connector               
          using a ferrite barrel having a cylindrical bore and using a                
          ferrite barrel having a rectangular bore indicated that the                 
          inductance of the latter was approximately five times that of the           
          former.  However, it is not apparent whether or not this                    
          disclosure constitutes a standard for measuring the recited                 
          "substantial increase," i.e., whether the expression "a                     
          substantial increase" in the claims should be interpreted as "an            
          approximately five-fold increase," or, if not, how great an                 
          increase must be before it constitutes a "substantial increase."            
          In view of the lack of a clear standard, we do not consider that            
          one of ordinary skill could reasonably determine the scope of               
          claims 1 and 2.                                                             
          The Examiner’s Rejections                                                   
               Before considering the rejections under §§ 102(f) and 103              
          individually, we note that a rejection over prior art of claims             

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