Appeal No. 2006-1211
Application 10/277,697
Thus, we determine that “zones of reduced thickness” in the casing, including flattened
slits,” constitute the corresponding structure in the written description necessary to perform the
function of opening the casing upon the action of saliva which acts to liberate the filling out of
the casing. While “holes” can enlarge “upon the action of saliva in the mouth” (see id., page 17,
ll. 8-9), there is no disclosure that such action also “acts to liberate the filling out of the casing,”
that is, enlarges the “holes” so as “to liberate the filling out of the casing.” Indeed, appellant
discloses in the written description that the size of the “hole can be linked to the amount of the
filling” and “release [the filling] upon short contact with the saliva” (e.g., page 17, l. 25, to page
18, l. 8; FIGs. 5 and 6, “holes” 720,721 and 750,751, respectively). Thus, on this record,
“holes” are not “equivalent” to the “corresponding structure” because they do not perform the
identical function in substantially the same manner to obtain substantially the same result and are
otherwise substantially different in structure.
We interpret the further claim requirement “wherein the confectionery material has
dissolution properties effective to act together with the release means so as to enable the casing
to be left substantially as an empty shell before it has entirely dissolved in the mouth” to plainly
specify that once the saliva in the mouth has opened the shell at a zone or zones of reduced
thickness, the confectionery material filling the shell will be “substantially” dissolved via action
of the saliva which has entered the shell through said “release means” before the thus
“substantially” empty casing is entirely dissolved by the saliva. We find no definition or general
guidelines and examples in the written description in the specification sufficient as a standard to
enable a person of ordinary skill in the art to determine the degree to which the confectionery
material is “substantially” released from the casing before the casing is dissolved in the mouth.
Thus, we give the term “substantially” its ordinary meaning of “largely but not wholly,” and
therefore, the dissolution properties of the confectionery material must be such that it will largely
but not wholly dissolve in the saliva from the time that the “release means” is formed by the
action of the saliva and before the casing is dissolved by the same action. 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
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