Appeal No. 98-3017 8
Application No. 08/437,986
term, however, sheds no light on the scope of “substantially incomplete.” Furthermore,
the only other relevant disclosure in the specification, page 10, lines 6 and 7, is directed
to hydrocracking of non-aromatics as opposed to the scope of hydrocracking that occurs.
On this record, we conclude that the specification fails to provide a reasonable standard
for understanding the metes and bounds of the claimed subject matter, when the claims
are read in light of the specification. See Seattle Box Co. v. Industrial Crating &
Packing, Inc, 731 F.2d 818, 826, 221 USPQ 568, 573-574 (Fed. Cir. 1983). When
a word of degree is used it must be determined “whether the patent’s specification
provides some standard for measuring that degree.”
DECISION
We have reversed the rejection of claims 7 through 12 under 35 U.S.C. § 103(a)
as being unpatentable over Burress in view of Parker. Under the provisions of 37 CFR
§ 1.196(b) a new ground of rejection of claim 12 has been entered.
This decision contains a new ground of rejection pursuant to 37 CFR
§ 1.196(b) (amended effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg.
53,131, 53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122
(Oct. 21, 1997)). 37 CFR § 1.196(b) provides that, “A new ground of rejection shall
not be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellants, WITHIN TWO MONTHS
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