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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