Appeal No. 1997-4318
Application 08/469,806
Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572-73, 40 USPQ2d 1619, 1622-23
(Fed. Cir. 1996) (“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.”); In
re Mattison, 509 F.2d 563, 564-65, 184 USPQ 484, 486 (CCPA 1975).
Appellants contend in their brief (e.g., page 3, lines 6-7, page 4, lines 10-12, page 6, line 19,
to page 7, line 2, page 9, lines 4-7, and page 11, lines 3-7) and reply brief (page 1, lines 10-13,
page 2, lines 7-11, and page 11, line 1) and argued at hearing that the microgranulate inorganic pigment
composition as claimed in claims 13 and 26 do not contain “organic liquefiers” and are derived from
inorganic compounds. We cannot agree that these claims are so limited because each of these claims
specifically provide that the claimed microgranulate inorganic pigment composition is “substantially free
of organic liquefiers” and contains “one or more boron, aluminum, silicon, titanium, zinc and tin
compounds.”
With respect to the first claim limitation, we find that the specification lists organic compounds
known in the art to be “binder(s) for promoting dispersion of the pigment in concrete” and states that
such “dispersing agents act as liquefiers in the concrete mixtures” (page 2, lines 23-38). There is no
disclosure pertaining to such “liquefiers” in the written description of the invention disclosed in the
specification. Thus, in the absence of guidance in the form of a definition or some standard of
measurement by which to determine the extent to which the microgranulate inorganic pigment
composition is “substantially free of organic liquefiers,” we interpret this limitation in light of the ordinary
meaning of the term “substantially” to specify that the microgranulate inorganic pigment composition is
considerably but not wholly free of “organic liquefiers.”
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