Appeal No. 2005-2531
Application No. 10/148,759
Under the circumstances recounted above, we cannot sustain
either the Section 103 rejection of claims 1, 3-12 and 14 as
being unpatentable over Fahrenkrug or the Section 103 rejection
of claims 1, 3-8, 13 and 14 as being unpatentable over Palumbo.
REMAND
Pursuant to our authority in 37 CFR § 41.50(a)(1)(September
2004), we hereby remand this application to the examiner for the
purpose of taking further action consistent with our comments
below.
The appellants’ independent claim 1 at three different
points contains the term “substantially” which is a word of
degree that may render a claim indefinite under the second
paragraph of 35 U.S.C. § 112 depending upon whether an artisan is
provided with some standard for measuring the degree in question.
See Seattle Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d
818, 826 and 829, 221 USPQ 568, 573-74 and 576 (Fed. Cir. 1984).
Also see MPEP, § 2173.05(b)(Revision 2, May 2004). Compare Verve
LLC v. Crane Cams, Inc., 311 F.3d 1116, 11120, 65 USPQ2d 1051,
1054 (Fed. Cir. 2002).
More specifically, we observe that the claim 1 phases
“substantially parallel” on line 3 and “substantially constant
thickness dimension” on lines 4-5 are expressly defined on pages
7
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