Appeal 2007-0114
Application 10/990,960
specification by the Examiner does not reveal any explanation of how
to construe “substantially.” Note that the case[s] cited by Appellants
[i.e., In re Nehrenberg, 280 F.2d 161, 126 USPQ 383 (CCPA 1960);
In re Mattison, 509 F.2d 563, 184 USPQ 484 (CCPA 1975); and,
Andrew Corp. v. Gabriel Electronics, 847 F.2d 819, 6 USPQ2d 2010
(Fed. Cir. 1988)] did indeed provide technical background for
understanding the use of “substantially”; Appellants’ specification
does not, and so the word is indefinite.
Answer 8.
6. The term “substantially” is not mentioned or defined in the
specification.
7. Appellants reply that “[t]he originally-filed specification provides
support for the term ‘substantially’ as it is used in the claim. It is clear from
the specification as well as the understanding of one of ordinary skill in the
art how this term is used in conjunction with the claimed invention.” Reply
Br. 5. Appellants go on to say:
Claim 1 recited “predicting the next price movement in the
financial market based on a majority of output values being
substantially the same.” For example, the specification recites, “if 7
out of the 13 models have a B signal (i.e., a majority), one unit of
trading is added to the current position (i.e., go long).” Para. [0040].
In this particular example, the output values are exactly the same – the
majority have a “B signal.” In the claim, however, in order to show
the breadth of the invention, the output values are required only to be
“substantially the same.” In other words, although the exemplary
embodiment in the specification utilizes buy (B), sell (S), and neutral
7
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