Appeal No. 98-0057
Application No. 08/320,016
the plastic layer upon exposure to ultraviolet
light.... By light-reflecting color it is meant that
the color is light enough to provide adequate
reflection of light to allow accurate visual or
video inspection of the inside of the pipe.
We are not persuaded by appellant’s arguments that the
rejection of claims 1 through 8 under the second paragraph of
§ 112 is improper. Although an inventor is free to define
specific terms used in a claim to describe his or her
invention, this must be done with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d 1475,
1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994). Neither of the
definitions quoted supra meets the Paulsen requirements.
With regard to the expression “accurately inspected” in
claim 1 and the expression “ accurate . . . inspection” in the
above-quoted definition for the phase “light-reflecting
color,” it is unclear how thorough the inspection must be in
order to be considered as being “accurate.” Appellant’s
specification does not contain any guidelines to enable one
skilled in the art to determine what constitutes an “accurate
inspection.” Compare Seattle Box Co. v. Industrial Crating &
Packing Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984). For these reasons alone, claim 1 does not define the
4
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