Appeal No. 1999-0608 Page 7
Application No. 08/571,471
would be implicit to one skilled in the art defining the term
"substantially" as used in the terminology "substantially
polyimide" that would enable one skilled in the art to
ascertain what is meant by "substantially." For example, one
cannot ascertain with any certainty whether the polyamideimide
resin of the APA (or the Moriguchi patent publication
mentioned therein) is "substantially polyimide" or whether the
resin taught by Dan'hata comprising 20 to 40% polyimide resin
is "substantially polyimide." Absent such guidelines, we are
of the opinion that a skilled person would not be able to
determine the metes and bounds of the claimed invention with
the precision required by the second paragraph of 35 U.S.C. §
112.6
Accordingly, it is our opinion that claim 1 is indefinite
for failing to particularly point out and distinctly claim the
invention. Thus, we enter a new ground of rejection of claim
The fundamental purpose of a patent claim is to define the scope of6
protection and hence what the claim precludes others from doing. All things
considered, because a patentee has the right to exclude others from making,
using and selling the invention covered by a United States letters patent, the
public must be apprised of what the patent covers, so that those who approach
the area circumscribed by the claims of a patent may more readily and
accurately determine the boundaries of protection in evaluating the
possibility of infringement and dominance. See In re Hammack, 427 F.2d 1378,
1382, 166 USPQ 204, 208 (CCPA 1970).
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