Appeal No. 2004-0906
Application No. 09/571,896
of the claim when read in light of the specification. See In re
Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754, 1759 (Fed. Cir.
1994). The word “substantially” in the phrase “substantially
parallel planar” is a “word of degree” or an imprecise term.
Claims which include such terms or words of degree must provide
some standard for measuring that degree, when read in light of the
specification as understood by one of ordinary skill in the art.
See Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc.,
731 F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984). The phrase
“substantially parallel planar” was added to the claims in an
amendment (see the amendment dated Sep. 26, 2002, Paper No. 11).
Appellants have not identified any original disclosure that defines
or sets forth guidelines for the word “substantially,” nor have
appellants identified whether “substantially” modifies “parallel”
or “planar” or both. Therefore we conclude that, on this record,
one of ordinary skill in this art would have to use surmise and
conjecture to determine the metes and bounds of the claims when
read in light of the specification. See Ex parte Anderson, 21
USPQ2d 1241, 1249 (Bd. Pat. App. & Int. 1991); cf., York Products
Inc. v. Central Tractor Farm & Family Center, 99 F.3d 1568, 1572-
73, 40 USPQ2d 1619, 1622-23 (Fed. Cir. 1996).
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