Appeal No. 2000-0503 Page 16
Application No. 08/902,031
The appellants' disclosure does not provide explicit guidelines defining the terminology
"essentially mostly." Furthermore, there are no guidelines that would be implicit to one skilled
in the art defining the phrase "essentially mostly" as used in the claims that would enable one
skilled in the art to ascertain what is meant by that phrase. While one of ordinary skill in the
art might infer that "mostly" requires a majority (i.e., greater than 50%), the degree to which
the term "essentially" broadens or narrows that term would require speculation. Moreover,
according to the Hinkle declaration submitted by appellants on August 31, 1998 (Paper No. 6),
finite element analyses performed on four examples falling within the scope of appellants'
disclosure yielded suspension or hanging load percentages ranging from as low as 41% to as
high as 72%. As there is no indication that the above-cited statement on page 10 of appellants'
specification is limited only to certain embodiments of the invention, all of the finite element
examples discussed in the Hinkle declaration would appear to fall within the scope of
intermodal containers wherein the tank is "essentially mostly" suspended by the hangers 47. In
view of this broad range of percentages, which includes a value under 50% and a value as high
as 72%, and in the absence of explicit 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.
CONCLUSION
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