Appeal No. 1999-0608 Page 5
Application No. 08/571,471
Before addressing the examiner's rejections based upon
prior art, it is essential that the claimed subject matter be
fully understood. Analysis of whether a claim is patentable
over the prior art under 35 U.S.C. §§ 102 and 103 begins with
a determination of the scope of the claim. The properly
interpreted claim must then be compared with the prior art.
Claim interpretation must begin with the language of the claim
itself. See Smithkline Diagnostics, Inc. v. Helena
Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472
(Fed. Cir. 1988). Accordingly, we will initially direct our
attention to appellant's claim 1 to derive an understanding of
the scope and content thereof.
Claim 1 recites, inter alia, a "retainer being a
substantially polyimide sintered member formed by sintering a
polyimide resin powder" (emphasis added).
The term "substantially" is a term of degree. When a
word of degree is used, such as the term "substantially" in
claim 1, it is necessary to determine whether the
specification provides some standard for measuring that
degree. See Seattle Box Company, Inc. v. Industrial Crating &
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