Ex Parte Mitchell et al - Page 10



             Appeal 2007-1928                                                                                  
             Application 10/163,282                                                                            
             size, content, or in any other manner so as to be personally expressive.                          
             Specification at 8:20.  We note that the broadest claims refer not to a customized                
             image but to a customizable bit of material.  Thus, we infer that to customize a bit              
             of material can refer merely to the selection of the size, shape, or content of the               
             material. This interpretation is buttressed by express claim language. See, e.g.,                 
             claims such as claims 123, 146, 167, etc.                                                         
                   Additionally, as we survey the claimed subject matter we are mindful of the                 
             full import of the expression “customizable.” The suffix “–able” indicates in                     
             English that the word so modified “is capable of.” Consequently, “customizable”                   
             denotes an article that can be, but is not required to be, custom-made.  Note the                 
             following holding from In re Collier, 397 F.2d 1003, 1006, 158 USPQ 266, 268                      
             (CCPA 1968), a decision of the predecessor to our reviewing court:                                
                   “The main fault we observe in claim 17 is indefiniteness in the                             
                   sense that things which may be done are not required to be                                  
                   done.  For example, the ferrule or connector member is                                      
                   crimpable but not required, structurally, to be crimped; the                                
                   ground wire “means,” which we take to be a piece of wire, is                                
                   for disposition under the ferrule but is not required to be                                 
                   disposed anywhere; it becomes displaced when the ferrule is                                 
                   crimped but that may never be, so far as the language of claim                              
                   17 is concerned.  These cannot be regarded as structural                                    
                   limitations and therefore not as positive limitations in a claim                            
                   directed to structure.  They cannot therefore be relied on to                               
                   distinguish from the prior art.”                                                            
             The court is treating “crimpable” and like expressions as optional in the sense that              
             crimping is not required.  Thus, that some stock material is “customizable” relates               
             to a situation which may never be. It is certainly not required by the express claim              
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