Appeal No. 1997-3096
Application 08/391,407
a term of degree, must be interpreted to require that the content of inorganic filler is at least about
50% by weight of the thermoplastic elastomer. See York Prods., 99 F.3d at 1572-73, 40 USPQ2d
at 1622-23 (“In this case, the patent discloses no novel use of claim words. Ordinarily, therefore,
‘substantially’ means ‘considerable in . . . extent,’ American Heritage Dictionary Second College
Edition 1213 (2d ed. 1982), or ‘largely but not wholly that which is specified,’ Webster’s Ninth
New Collegiate Dictionary 1176 (9th ed. 1983).”); Seattle Box Co., Inc. v. Industrial Crating &
Packing Inc., 731 F.2d 818, 826, 221 USPQ 568, 573-74 (Fed. Cir. 1984) (“Definiteness
problems arise when words of degree are used. That some claim language may not be precise,
however, does not automatically render a claim invalid. When a word of degree is used . . . [it]
must [be determined] whether the patent’s specification provides some standard for measuring
that degree.”).
We find that the claim language “comprising . . . a thermoplastic elastomer” in claims 16
and 31 would include within their scope the thermoplastic elastomer blended with “from about
2% to about 20% of polyethylene selected from” the Markush group of low density polyethylenes
specified in claim 32, wherein these amounts are based on the mixture of thermoplastic elastomer
and low density polyethylene (see specification, page 5, lines 2-4). Indeed, appellants disclose in
the written description in the specification that “a suitable barrier against water, sound, dust and
air comprises a mixture of an inorganically filled thermoplastic elastomer intimately blended
with a suitable polyethylene such as” a “low density” polyethylene (page 2, lines 10-15, and page
4, line 22, to page 5, line 1) and that the “water, wind, air and dust benefits . . . are achieved
through the ability of the low density polyethylene to impart flexibility, high tear strength and
stretch characteristics to the sheet” (page 5, lines 10-13). However, we will not read into claims
16 and 31 the limitation that a “thermoplastic elastomer” must be any thermoplastic elastomer
blended with a “low density” polyethylene as in claim 32. See Paulsen, 30 F.3d at 1480, 31
USPQ2d a 1674; Zletz, supra; In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51
(CCPA 1969); cf. E.I. du Pont de Nemours v. Phillips Petroleum Co., 849 F.2d 1430, 1433, 7
USPQ2d 1129, 1131 (Fed. Cir. 1988).
Accordingly, we interpret the claim requirement that the “sheet” comprises at least
“material is a thermoplastic elastomer substantially filled with an inorganic filler” to encompass
- 9 -
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007