Appeal No. 2001-0205 Page 12
Application No. 08/692,016
this relationship is not explained in the specification and is not apparent therefrom. In the
absence of explanation, it is not clear how the diameter of the knot as compared to the
weight of the debris is a factor in supporting the bag on the frame and, equally importantly,
how one would determine whether a knot having a particular diameter falls within the scope
of the claims. A second, and related basis, is that “substantially” is used to define the
degree to which the weight of the debris need be supported in order to fall within the scope
of the claims. However, no guidance has been provided in the specification as to what
values or range of values comprise the required amount of support, and therefore one of
ordinary skill in the art would be unable to determine what constitutes “substantial” support
of the weight of the debris, as opposed to what is not substantial. Thus, considering the
two instances referred to above in and of themselves as well as in light of the specification,
it is our view that this phraseology does not allow one of ordinary skill in the art to readily
and accurately determine the boundaries of protection involved and evaluate the possibility
of infringement and dominance, which is required by the second paragraph of Section
112.7
7See Seattle Box Company, Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818,
826, 221 USPQ 568, 573-74 (Fed. Cir. 1984)(when a word of degree is used, such as the
term "substantially,"it is necessary to determine whether the specification provides some
standard for measuring that degree.), and In re Hammack, 427 F.2d 1378, 166 USPQ 204
(CCPA 1970).
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007