Appeal 2007-0113
Application 10/353,776
recited in claim 4, or “when the flow velocity is substantially uniform across
the nozzle cross section,” as recited in claim 5. When a word of degree is
used, such as the term "substantially" in claims 4 and 5, it is necessary to
determine whether the specification provides some standard for measuring
that degree. See Seattle Box Company, Inc. v. Industrial Crating & Packing,
Inc., 731 F.2d 818, 826, 221 USPQ 568, 573-74 (Fed. Cir. 1984). As
discussed above, we find the parenthetical “(e.g. within 10-20%),” in using
language of an exemplary nature, fails to clearly define the metes and
bounds of the phrase “substantially uniform” to permit one of ordinary skill
in the art to ascertain the scope of the term “substantially” (Fact 5).
Appellants’ Specification provides no other hint as to what is meant by
“substantially uniform.” Id. We therefore agree with the Examiner that
claims 4 and 5 are indefinite.
In light of the above, the indefiniteness rejection is affirmed as to
claims 4 and 5 and reversed as to claims 2, 3, 6, and 7.
The enablement rejection
Insofar as the enablement requirement is concerned, the dispositive
issue is whether Appellants’ disclosure, considering the level of ordinary
skill in the art as of the date of Appellants’ application, would have enabled
a person of such skill to make and use Appellants’ invention without undue
experimentation. In re Strahilevitz, 668 F.2d 1229, 1232, 212 USPQ 561,
563-64 (CCPA 1982). In calling into question the enablement of
Appellants’ disclosure, the Examiner has the initial burden of advancing
acceptable reasoning inconsistent with enablement so as to shift the burden
to Appellants to show that one of ordinary skill in the art could have
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