Appeal 2007-1470
Application 10/644,567
"much" is a word of degree and the Specification appears to provide no
standard for measuring that degree. Thus, it is unclear whether one of
ordinary skill in the art would understand what is being claimed even when
claim 1 is read in light of the Specification. See Seattle Box Co. v. Industrial
Crating & Packing, Inc., 731 F.2d 818, 574, 221 USPQ 568, 573-74 (Fed.
Cir. 1984).
In response to this Remand, the Examiner must address and resolve on
the written record whether and why the appealed claims do or do not satisfy
the second paragraph requirements of 35 U.S.C. § 112.
Finally, appealed claim 1 recites three "means" and Appellants
expressly acknowledge this fact albeit "[w]ithout admitting any applicability
of 35 U.S.C. § 112, sixth paragraph" (Br. 2). Notwithstanding Appellants'
desire to avoid admitting any sixth paragraph applicability, the Examiner
must respond to this Remand by providing the written record of this
application with an interpretation of the claim 1 "means" language in
accordance with the guidelines set forth in the Manual of Patent Examining
Procedure (MPEP) § 2181(8th ed., Rev. 5, Aug. 2006). As explained in these
guidelines, such an interpretation is a necessary part of the examination
process for determining compliance with the various requirements for
patentability.
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