Appeal No. 2001-0570
Application No. 09/049,591
analyzed–not in a vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing the
ordinary skill in the pertinent art. In re Moore, 439 F2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971).
The examiner’s suggestion would appear to limit the claims to a maximum
thickness of about 30 nm, whereas the claim language, as written, seeks to protect
maximum thicknesses of not only about 30 nm but also thicknesses less than this
amount. Absent a showing in the prior art that appellants are not entitled to this
broader scope of coverage, the examiner may not arbitrarily try to limit appellants’ claim
scope.
As far as the instant claim language itself is concerned, we find nothing indefinite
in calling for a maximum thickness “of less than about.” Clearly, it is the “about”
language which bothers the examiner. However, this is acceptable language in patent
claims, recognizing that, sometimes, exact precision cannot be maintained in practical
cases and so, in the instant case, the claim seeks protection on maximum thicknesses
of less than 30 nm, or thicknesses which can be reasonably construed to be essentially
30 nm, give or take small fractions of a nanometer or reasonable tolerance.
Our dissenting colleague indicates that he finds the claim language indefinite
since the specification uses the term without clarification and there is no indication as to
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007