Appeal No. 2002-1395 Page 5
Application No. 08/789,702
necessary to determine whether a specification provides some standard for measuring
that degree." Ex parte Oetiker, 23 USPQ2d 1651, 1654 (Bd. Pat. App. & Int. 1990)
(citing Seattle Box Co., 731 F.2d at 826, 221 USPQ at 574), aff'd, 951 F.2d 1267, 23
USPQ2d 1661 (Fed. Cir. 1991).
Here, the specification provides no standard for measuring a degree of relative
flatness. The passage of the specification cited by the appellants merely uses a
different word of degree, viz., "effectively," (Spec. at 45); It does not indicate how the
claimed "detailed description" relates to or differs from detailed descriptions that are not
relatively flat. Absent such a standard or indication, the claims read in light of the
specification fail to apprise one skilled in the art of the scope of the invention.
Therefore, we affirm the indefiniteness rejection of claims 13-15 and 48-50.
Second, the examiner asserts, "[t]he term 'template' in the claims is used by the
claim to mean 'that defined in lines 5-11, page 9, specification,' while the accepted
meaning is 'that given in col. 1, line 65 to col. 2, line 5 of Van Dyke.' The Examiner
can not [sic] distinguish between the two definitions." (Examiner's Answer at 5.) The
appellants argue, "[t]hough Applicants do not understand the rejection, it is their
position that their definition and use of the term 'template' comports with the
requirements of MPEP 2173.05 (a)." (Appeal Br. at 24.)
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