Appeal No. 2004-2210 Page 4
Application No. 09/374,117
required is enough guidance to allow those of ordinary skill in the art to understand what is
encompassed by the claim. Id. If the level of guidance in the specification does not provide the
required standard for measuring that degree, the claim is indefinite under 35 U.S.C. § 112, ¶ 2.
Looking to the specification, we do not find the required standard for measuring the
degree to which fillers are allowed to be present in the outer layer. The phrase “substantially
free of particulate filler” is present on pages 7 and 8 of the specification. But we find no
discussion of what level of filler is “substantial.” Nor do we find a level of guidance which
would allow one to determine what is a “substantial” amount of filler. Moreover, there are
examples disclosed in the specification in which layer C is disclosed as containing 60% Ampacet
100720 (Examples 6 and 7). According to the specification at page 13, lines 11-19, Ampacet
100720 is a particulate filler concentrate containing calcium carbonate filler. The specification
indicates that filler concentrates such as Ampacet 100720, at a minimum, contain 50% filler
(specification, p. 13, ll. 11-19). Therefore, the skin layer of Examples 6 and 7 contain, at a
minimum, 30% filler (Examples 6 and 7). Whether the recitation “substantially free of
particulate filler” as recited in the claims encompasses the filler amounts of Example 6 and 7 is
unknown: The specification is silent in this regard.
The amounts of filler excluded by “substantially free of particulate filler” is not
determinable on this record. We, therefore, conclude that claims 26-29 and 32 are indefinite and
thus fail to meet the requirements of 35 U.S.C. § 112, ¶ 2.
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