Appeal 2005-2547
Application 10/134,817
section (shown, e.g., at 16 in Fig. 1) which allows the drilling suspension to
swell (Specification 7:15-17). The swelling section 16 is illustrated as
having a length and width in the figures and, according to the Specification,
it is a specific structure that “may consist of an intermediate container or a
coiled tube, or … the section of the drilling pipe 10.” (Specification 7:17-
20). Any section of pipe downstream of the pump that would allow swelling
will have “a length or width sufficient to allow swelling of the suspension
stream” as claimed. The limitation is so broad as to be almost meaningless
(based on changes in pressure, almost any length of pipe will allow swelling
of a swellable material) but “breadth is not indefiniteness.” In re Gardner,
427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970).
With regard to the use of the relative term “high pressure” in claims
17 and 19, the Examiner contends that this terminology is indefinite because
no numerical examples were provided in the Specification and the record
reflects that the term “high pressure” does not refer to a reasonably definite
concept (Answer 4).
We agree with the Examiner that the term “high” is a term of degree.
We also agree that the Specification provides no standard, numerical or
otherwise, for measuring the degree of “high.” However, while the absence
of a standard in the Specification for measuring what is “high” may have
initially supported a reasonable basis for concluding that one of ordinary
skill in the art would not have been reasonably apprised of the scope of the
claim, see Seattle Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d
818, 826, 221 USPQ 568, 573-74 (Fed. Cir. 1984) (holding that “[w]hen a
word of degree is used the district court must determine whether the patent’s
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