Appeal No. 2000-0182 Page 15
Application No. 08/831,327
term "substantially" as used in the terminology "increasing
substantially monotonically" that would enable one skilled in the
art to ascertain what is meant by "substantially." 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. See In re Hammack, supra.
Since the appellants' disclosure fails to set forth an
adequate definition as to what is meant by the terminology
"increasing substantially monotonically " in claim 1 for the
reasons set forth above, the appellants have failed to
particularly point out and distinctly claim the invention as
required by the second paragraph of 35 U.S.C. § 112.
CONCLUSION
To summarize, the decision of the examiner to reject claims
1, 3/1, 4/1, 10/1, 11/1, 12/1 and 22 under 35 U.S.C. § 103 is
reversed and new rejections of claims 1, 3/1, 4/1, 10/1, 11/1,
12/1 and 22 under 35 U.S.C. § 112, first and second paragraphs,
have been added pursuant to provisions of 37 CFR § 1.196(b).
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