Appeal No. 1997-3096
Application 08/391,407
filled with about 50% to about 95% inorganic filler.”5 Thus, each of claims 16, 31 and 32 define
a deflector in one set of terms regarding the two dimensional shape thereof and in another set of
terms regarding the elastomeric material of which it is made.
With respect to the shape and dimensions of the claimed “flat and flexible material” or
“sheet of material” articles, we find from the record on appeal that while the terms “deflector for
application to the inner panel of a vehicle” with respect to the “intrusion of water and sound” or
“attenuate sound” “past said vehicle panel” or “through an opening,” and the requirements that
“the flat and flexible material” or “sheet of material” must have “a peripheral shape generally
matching the peripheral configuration of the inner panel” constitute an intended purpose or use
for the articles, as the examiner points out (answer, page 6), the terms must nonetheless be given
weight with respect to the two dimensional shape of the claimed article in order to give meaning
to the claims and properly define the invention. See generally, Corning Glass Works; cf. Loctite
Corp. v. Ultraseal, Ltd., 781 F.2d 861, 868, 228 USPQ 90, 94 (Fed. Cir. 1985), overruled on
other grounds, Nobelpharma AB v. Implant Innovations, 141 F.3d 1059, 1068, 46 USPQ2d 1097,
1104 (Fed. Cir. 1998) (The claim language “adapted to remain in a liquid, nonpolymerizing state
for prolonged periods of time while in contact with air and to polymerize to the solid state in the
absence of air and upon contact with metal surfaces . . .” was interpreted by the court “as merely
language of intended use, not a claim limitation. [Citation omitted.]”).
However, with respect to appellants’ argument that the cited language of claims 16, 31
5 We note that claim 31 provides in part that “said material comprises a thermoplastic elastomer
substantially filled with an inorganic filler” while claim 32, dependent on claim 31, provides in
part that “said inorganic filler further comprises a thermoplastic elastomer substantially filled
with from about 50% to about 95% of an inorganic filler.” It is readily apparent that the cited
phrase in claim 32 is indefinite under 35 U.S.C. § 112, second paragraph, in defining “an
inorganic filler” as comprising the organic “thermoplastic elastomer” which further contains an
inorganic filler. In order to avoid piecemeal appellate review, we find that a reasonable,
conditional interpretation of claim 32 based on the specification (e.g., pages 4-5) that is adequate
for purposes of resolving prior art issues can be made without unsupported speculative
assumptions, and thus, for purposes of this appeal, we have arrived at this interpretation. Cf. In re
Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962); Ex parte Saceman, 27 USPQ2d
1472, 1474 (Bd. Pat. App. & Int. 1993). However, while we have so considered claim 32, the
matter of whether this claims complies with § 112, second paragraph, should be addressed by the
examiner upon any further consideration of claim 32 subsequent to this appeal.
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