Appeal No. 2003-0454 Page 7
Application No. 09/644,734
ascertain what is meant by "substantially the same." For example, one cannot
ascertain if Miyashita's ceramic dresser 22 which comprises a ceramic made by
sintering alumina, silicon nitride, silicon carbide or the like is "substantially the same" as
the material to be polished off the substrates disclosed by Miyashita (e.g., a polysilicon
film, a SiO2 film). Absent such guidelines, we are of the opinion that a skilled person
would not be able to determine the metes and bounds of the claimed invention with the
precision required by the second paragraph of 35 U.S.C. § 112. See In re Hammack,
supra.
Since the appellants' disclosure fails to set forth an adequate definition as to
what is meant by the terminology "substantially the same" as used in claims 1, 16 and
19, the appellants have failed to particularly point out and distinctly claim the invention
as required by the second paragraph of 35 U.S.C. § 112.
NEW GROUND OF REJECTION
Under the provisions of 37 CFR § 1.196(b), we enter the following new ground of
rejection.
Independent claims 1, 16 and 29 and claims 2 to 7, 10 to 15, 17 to 20, 23 to 28
and 30 to 37 dependent thereon, are rejected under 35 U.S.C. § 112, second
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