Appeal No. 2006-1211
Application 10/277,697
‘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 often arise when words of
degree are used in a claim. 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.”); In re Mattison, 509 F.2d 563, 564-65, 184 USPQ 484, 486 (CCPA 1975)
(“substantially increase the efficiency of the compound as a copper extractant”); cf. In re Marosi,
710 F.2d 799, 802-03, 218 USPQ 289, 292 (Fed. Cir. 1983) (“essentially free of alkali metal”).
We pointed out above that the examiner has not determined the “corresponding structure”
disclosed in the written description in the specification and “equivalents” thereof with respect to
the claim language. The interpretation of this language is necessary to the interpretation of the
remainder of the subject claim language. Thus, in the absence of the examiner’s determinations
in these respects, the basis for the ground of rejection under § 102(b) based on Forester and all of
the grounds of rejections under § 103(a) essentially based on Forester and Maddox is not
apparent from the record. We agree with appellant (brief, page 14; reply brief, pages 1-2) that
the examiner does not state the factual basis in Forester for the claim language we interpreted
above in rejecting independent claims 27, 28 and 30 under § 102(b) (see answer, paragraph
bridging pages 3-4, second sentence, last clause). Indeed, while the examiner cites col. 1, ll. 16-
25 and 27-31, of Forester in this respect, there is no identification of the claimed “release means”
or the interaction of this property of the casing with the dissolution properties of the
confectionery material, and the examiner further admits as much with respect to both claim
requirements (answer, paragraph bridging pages 5-6, first sentence).
With respect to the grounds of rejection under § 103(a), we also agree with appellant that
the examiner has not explained the teachings in Forester and in Maddox which would have
suggested to one of ordinary skill in this art to combine the same, and would have further
motivated this person to modify Forester by the teachings of Maddox to arrive at the claimed
invention encompassed by independent claims 1 and 30, as we have interpreted these claims
above (brief, pages 15-16; reply brief, pages 2-3). Indeed, the record is silent with respect to a
scientific explanation or objective evidence supporting the examiner’s position that “the Office
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