Appeal No. 2006-1169
Application No. 10/005,728
We found the claims to be indefinite because of the
inclusion of the trademark PENTIUM therein. We found that it was
not the use of the trademark, per se, that makes the claims
indefinite, but, rather, that the use of that particular
trademark in these claims failed to particularly point out and
distinctly claim the subject matter considered by appellants to
be the invention. We concluded that the claims were indefinite
because the artisan could never be sure what product is being
referenced by the use of the term PENTIUM since this mark
describes various products which change from time to time.
Appellants contend that we have not read this limitation as
the skilled artisan would be deemed to have read the term not
only in the context of the particular claim in which the term
appears, but in the context of the entire patent, including the
specification.
We agree with appellants in their statement of the law as
expressed in Phillips v. AWH Corp, 415 F.3d 1303, 1313; 75 USPQ2d
1321, 1326 (Fed. Cir. 2005). However, we do not agree with their
application of the law in the present context. The instant
specification sets forth no special meaning to, and no special
version of, the PENTIUM product. If the claims were limited to a
specific version of the PENTIUM product that could be identified
with specificity, then we would agree that the claimed subject
matter would be definite and pass muster under 35 U.S.C. § 112,
2
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007