Appeal No. 2005-2465
Application 10/293,373
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984).
Upon reconsideration of the record as a whole we agree with the position of the
examiner, including his response to appellants’ arguments in the brief and consideration of the
Siskin Declaration (answer, pages 3-5), to which we added the following for emphasis.
We interpret appealed independent claim 1 by giving the terms thereof the broadest
reasonable interpretation in their ordinary usage as they would be understood by one of ordinary
skill in the art in light of the written description in the specification, as interpreted by this person,
unless another meaning is intended by appellants as established in the written description of the
specification, and without reading into the claims any limitation or particular embodiment
disclosed in the specification. See, e.g., In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989). We determine that the plain language of claim 1 encompasses a delayed coking
process which comprises at least the specified steps which produce a product wherein
“substantially all of the coke produced is substantially free-flowing anisotropic shot coke.” The
terms “substantially all” and “substantially free-flowing” are terms of degree because of the term
“substantially,” and thus the written description in the specification must either provide a
definition for these terms or we give them their ordinary meaning in context. See Morris, 127
F.3d at 1054-55, 44 USPQ2d at 1027; York Prods., Inc. v. Central Tractor Farm & Family Ctr.,
99 F.3d 1568, 1572-73, 40 USPQ2d 1619, 1622-23 (Fed. Cir. 1996) (“In this case, the patent
discloses no novel use of claim words. Ordinarily, therefore, ‘substantially’ means ‘considerable
in . . . extent,’ American Heritage Dictionary Second College Edition 1213 (2d ed. 1982), or
‘largely but not wholly that which is specified,’ Webster’s Ninth New Collegiate Dictionary
1176 (9th ed. 1983).”); Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818,
826, 221 USPQ 568, 573-74 (Fed. Cir. 1984) (“Definiteness problems arise when words of
degree are used. That some claim language may not be precise, however, does not automatically
render a claim invalid. When a word of degree is used . . . [it] must [be determined] whether the
patent’s specification provides some standard for measuring that degree.”).
There is no definition of the terms “substantially all” and “substantially free-flowing” in
the written description in the specification. A reasonable, ordinary meaning of the former term
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