Appeal No. 1999-0033
Application No. 08/514,255
“substantially unrestrained by the elastic member.” In claim 12, the deformation of the
vane member in an impeller radial direction is recited to be “substantially unrestrained by
the inner casing.” Each occurrence of the term “substantially” renders the claimed
subject matter indefinite. Furthermore, the recitation of “vane members” in claim 9 lacks
antecedent basis.
When a word of degree such as “substantially” is used in a claim, it must be
determined whether the underlying specification provides some standard or guideline for
measuring that degree, such that a person of ordinary skill in the art would understand
what is claimed when the claim is read in light of the specification. Seattle Box Co. v.
Industrial Crating & Packing Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir.
1984).
In the present case, we find no standards or guidelines in appellants’ specification
for measuring the scope of the word “substantially” in each of the occurrences quoted
supra. In fact, in response to Interrogatory No. 7 in our Order mentioned above,
appellants have not pointed to any standards or guidelines in the specification for
determining the scope of the term “substantially” as used in claims 9 and 12. Instead, in
response to our Order, appellants are content with arguing that the claim language in
question is definite. Those arguments are unpersuasive.
The “concurring/dissenting” opinion in Zodiac Pool Care Inc. v. Hoffinger
Industries Inc., 206 F.3d 1408, 1418, 54 USPQ2d 1141, 1149 (Fed. Cir. 2000) does not
overrule the requirement for standards or guidelines as set forth in Seattle Box.
Furthermore, the asserted definitions for the word “substantially” are terms of degree that
are just as indefinite as the word “substantially” itself. The need to cover what might be
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