Appeal No. 2003-1162 Page 12
Application No. 09/468,292
The Examiner’s conclusion of indefiniteness is based on the finding that the specification
does not provide a standard for ascertaining the degree to which the precursor must dissolve in
order to be “substantially dissolved” (Answer, p. 19). We agree. With regard to a term of degree
such as “substantially,” the specification must provide some standard for measuring the degree.
Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574
(Fed. Cir. 1984). Here, there is no standard, only silence.
Appellant argues that, based on the teachings in the specification at page 10, lines 5-7,
page 17, lines 24-25, and page 12, lines 18 and 27, a skilled artisan could readily ascertain if a
substantial amount of the precursor has been dissolved, especially in view of the guidance in the
specification at page 17, lines 24-25, that “[a]s much of each precursor as possible is dissolved in
the solvent.” (Amended Brief, p. 17 referring to p. 15).
In truth, the passages cited by Appellant do not provide any guidance as to how much of
the precursor must dissolve to be “substantially dissolved.” The statement on page 10, lines 5-7
that the ionic liquids “are able to dissolve relatively large quantities of a wide variety of
precursors” only indicates that ionic liquids are good solvents for many precursors, it gives no
guidance as to what amounts of solids may remain after addition of the solvent nor does it
indicate that the precursors should be “substantially dissolved,” completely dissolved, or discuss
any other level of dissolving. The statement on page 17, lines 24-25 that “[a]s much of each
precursor as possible is dissolved in the solvent” merely indicates that the solution should be at,
or close to, saturation: it does not provide a standard for determining what level of dissolving is
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