Appeal No. 2006-1296 Page 6
Application No. 10/759,873
Admittedly, the fact that some claim language, such as the term of degree mentioned
supra, may not be precise, does not automatically render the claim indefinite under the second
paragraph of 35 U.S.C. § 112. Id. Nevertheless, the need to cover what might constitute
insignificant variations of an invention does not amount to a license to resort to the unbridled use
of such terms without appropriate constraints to guard against the potential use of such terms as
the proverbial nose of wax.
In Seattle Box, the court set forth the following requirements for terms of degree:
When a word of degree is used the district court must determine
whether the patent's specification provides some standard for
measuring that degree. The trial court must decide, that is,
whether one of ordinary skill in the art would understand what is
claimed when the claim is read in light of the specification.
In this instance, the only discussion of the obtuse angle or the requirement that it be
“substantially greater than 90o” appears on page 4 of the present specification. In particular, the
specification states: “The upstanding engagement portions 30 and 32 form obtuse angles
substantially greater than 90o as illustrated in Figure 3 with the flat anchor portion 26 with all
being formed from the same plate.” One skilled in the art would find no guidance in either this
discussion in the specification or the illustration in Figure 3 as to the metes and bounds of the
phrase “substantially greater than 90o.” Claim 1 is therefore indefinite. Claims 2 and 3, which
depend from claim 1, are likewise indefinite.
CONCLUSION
To summarize, the obviousness-type double patenting rejection of claims 1-3 is
sustained, the rejections under 35 U.S.C. § 103 are reversed and a new rejection of claims 1-3 is
entered.
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