Appeal No. 2004-0189 Page 8
Application No. 09/782,782
less than about 55 shore D, and (2) dependent claims 3 and 19 further require the outer
cover layer to have a material hardness less than about 50 shore D.6
Absent guidelines that would enable one skilled in the art to ascertain what is
meant by "about" as used in the claims under appeal, 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 "about" as used in the claims under appeal, the appellants
has 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.
6 These dependent claims would seem to indicate that the appellants may have intended the
terminology "greater than about 56 Shore D" to encompass both a Shore D hardness less than 55 and a
Shore D hardness less than 50. However, such is not clear from the record before us in this appeal.
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