Appeal No. 1997-2977
Application No. 08/431,688
definitions for the recitations. In the absence of a 1
definition for the relative term “substantial,” we concur with
the examiner that one skilled in the relevant art would not be
able to ascertain the scope of the appealed claims.
The appellants argue that the recitation in question “is
not indefinite at any point of novelty” (appeal brief, page
8). We point out, however, that the test for indefiniteness
under the second paragraph of 35 U.S.C. § 112 does not involve
any question as to whether the claim language under
consideration defines a novel feature of the claimed subject
matter. Accordingly, the appellants’ argument on this point
is irrelevant.
The appellants further urge that “[o]ne of ordinary skill
in the art clearly knows what constitutes any substantial
surface reflectance in aluminum” (appeal brief, pages 8-9).
This argument, however, is not supported by factual evidence.
On this record, we determine that one skilled in the relevant
1This raises the question of whether the appealed
claims, as amended subsequent to the filing of this
application, violates the written description requirement of
35 U.S.C. § 112, first paragraph. In the event of further
prosecution, the examiner and the appellants should fully
explore this issue.
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