Appeal No. 2004-2210 Page 3
Application No. 09/374,117
under 37 CFR § 41.50(b),2 we enter a new ground of rejection under 35 U.S.C. § 112, ¶ 2. Our
reasons follow.
OPINION
One of the major questions in this case is whether McCormack describes outer layers
which are “substantially free of particulate filler,” a requirement in all of the claims. The
Examiner finds that the skin layers 18 and 20 of McCormack are substantially free of particulate
filler because the skin layer is not necessarily required to include particulate fillers (Answer, p.
3), but Appellant argues that the skin layers of the McCormack examples incorporate anti-block
compounds that contain a filler such as diatomaceous earth and are not substantially filler free
outer layers as claimed (Brief, p. 3 citing McCormack, col. 3, ll. 55-63 for filler descriptions).
Neither the Examiner nor the Appellant address the key underlying question: At what level of
particulate filler do the outer layers become “substantially free of particulate filler?” Before one
can determine whether what is in the prior art anticipates what is claimed, one must understand
the scope of the claim.
The word “substantially” in the limitation “substantially free of particulate filler” is a
term of degree. When a word of degree is used in the claim, the specification must provide some
standard for measuring that degree. Seattle Box Co. v. Industrial Crating & Packing, Inc., 731
F.2d 818, 826, 221 USPQ 568, 574 (Fed. Cir. 1984). Absolute precision is not required, what is
237 CFR § 41.50(b) replaced 37 CFR § 1.196(b) on September 13, 2004.
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