Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE HANS OETIKER
Appeal No. 88-3256
May 30, 1989
HEARD: April 4, 1990
Application for Patent filed October 23, 1986, Serial No. 922,408; a Continuation of Serial No. 622,764 filed June 20, 1984. Deformable Ear for Clamps.
Paul M. Craig, Jr. et al. for appellant
Supervisory Primary Examiner--Kenneth J. Dorner
Examiner--L. Cranmer
Before McCandlish, Pate and Staab
Examiners-in-Chief
McCandlish
Examiner-in-Chief
This appeal is from the examiner's rejection of claims 1 through 29, which are all of the claims in the application.
Appellant's invention is directed to a clamping band for a hose or other object. The band is of the type having a deformable, radially outwardly offset portion which appellant refers to in his specification and brief as an "Oetiker ear." The claimed invention is directed to improvements in the ear.
Claim 1 is representative of the appealed subject matter. A copy of this claim, as it appears in appellant's brief, is appended hereto.
The examiner relies upon the following references in support of his rejections of the appealed claims:
Oetiker (Oetiker '463) 3,789,463 Feb. 5, 1974
Oetiker (Oetiker '584) 4,237,584 Dec. 9, 1980
Oetiker (Oetiker '012) 4,299,012 Nov. 10, 1981
The claims stand rejected as follows:
1. Claims 1, 16, 17 and 18 are rejected under 35 U.S.C. 102(b) as being anticipated by Oetiker '012.
2. Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Oetiker '012 alone.
3. Claims 2 through 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Oetiker '012 in view of Oetiker '584.
4. Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Oetiker '012 in view of Oetiker '584 as applied in the rejection of claim 6 above, and further in view of Oetiker '463.
5. Claims 11, 12 and 24 through 29 are rejected under 35 U.S.C. 103 as being unpatentable over Oetiker '012 in view of Oetiker '463.
6. Claims 1 through 7, 16 and 17 are provisionally rejected under the judicially-created doctrine of obviousness-type double patenting as being "unpatentable over claims 8, 7, 2, 1 of copending application serial no. 922,473" (answer, page 6).
7. Claims 18 and 19 are also provisionally rejected under the judicially-created doctrine of obviousness-type double patenting as being unpatentable over "claims 4, 3, 2, 1 of copending application serial no. 922473" (answer, page 6).
8. Claims 14, 15 and 20 are also provisionally rejected under the judicially-created doctrine of obviousness-type double patenting as being unpatentable over "claims 6, 2, 1 of copending application serial no. 922,473" (answer, page 7).
*2 In addition to the foregoing rejections carried forward from the final office action (Paper No. 2), the following new grounds of rejection have been entered in the examiner's answer:
1. Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Oetiker '012 in view of Oetiker '463.
2. Claims 21 through 23 are provisionally rejected under the judicially-created doctrine of obviousness-type double patenting as being unpatentable over "claims 6, 2, 1 of copending application serial no. 922,473 in view of Oetiker ('584)" (answer, page 8).
Considering first the § 102 rejection of claims 1 and 16, we cannot agree with appellant that the claimed subject matter distinguishes from Oetiker '012 by reciting that the depression means has a generally pan-shaped configuration. According to its dictionary definition, [FN1] a pan is "a metal, earthenware, or plastic container (as a warming pan, dustpan, dishpan) for domestic use that is usu. [and hence, not necessarily] broad, shallow and open ..." Thus, when the claim language is given its broadest reasonable interpretation as required in In re Sneed, 710 F.2d 1544, 218 USPQ 385 (Fed.Cir.1983), a pan-shaped depression or depression means is not even required to be broad and shallow and certainly is not required to have a flat bottom as shown in the drawings of the subject application. Instead, especially in non-chemical cases, such as the case at bar, the words in a claim are generally not limited in their meaning to what is shown in the disclosure. In re Vogel, 422 F.2d 438, 164 USPQ 619, 622 (CCPA 1970).
Moreover, rather than just defining the configuration as being pan-shaped, claim 16 more broadly recites that the depression means is generally pan-shaped. Thus, when this claim language is given its broadest reasonable interpretation, it reads on the depression 17 shown in Figure 15 of Oetiker '012. The mere fact that the depression 17 in Oetiker '012 may have been described or labeled as "a groove" does not establish a distinction between the structure shown in the reference and the claim limitation that the depression means is of generally pan-shaped configuration.
With further regard to the § 102 rejection of claims 1 and 16, appellant argues that Oetiker '012 does not disclose that the depression means is relatively shallow. However, for reasons stated infra in our new rejection under 37 C.F.R. 1.196(b), no reasonably definite meaning can be ascribed to this limitation as well as to the limitation referring to the "non-reinforced condition" of the bridging part. It therefore is not possible to apply the prior art to claims 1 and 16 in deciding the question of patentability without requiring speculation as to what these limitations mean.
Accordingly, we are constrained to reverse the examiner's § 102 rejection of claims 1 and 16, as well as the § 102 rejection of claims 17 and 18, which are directly or indirectly dependent from claim 16, under the holding in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962). For the same reasons we are constrained to reverse the examiner's § 103 rejection of claims 2 through 9 and 11 through 13, all of which are directly or indirectly dependent from claim 1, as well as the § 103 rejection of claim 19, which depends from claim 18. As will be discussed infra in our new rejection under 37 C.F.R. 1.196(b), claims 2 through 9, 11, 13 and 19 contain additional indefinite language which precludes us from applying the prior art in determining the question of obviousness.
*3 Regarding the § 103 rejection of claim 10, to the extent that the subject matter encompassed by this claim is understandable, we cannot sustain the examiner's rejection thereof. Apparently conceding that Oetiker '012 does not disclose the claimed angular relationship of the connecting portions to the bottom portion of the depression means, the examiner relies upon Figure 4 of Oetiker '584 for a teaching of the subject matter added by claim 10. However, Figure 4 and the other relevant illustrations in Oetiker '584 are simply too vague to determine whether the angle of the connecting portions differ from a right angle by no more than about 20<<degrees>> as called for in claim 10. Furthermore, the specification in Oetiker '584 contains no disclosure of the feature defined in claim 10. Accordingly, the examiner has failed to make out a prima facie case of obviousness with respect to claim 10.
Turning now to the § 103 rejection of claim 24, the recitation that the depression means is generally pan-shaped does not distinguish the claimed subject matter from Oetiker '012 for reasons discussed supra with respect to claims 1 and 16. However, claim 24 contains other language which, for reasons stated infra in our new rejection under 37 C.F.R. 1.196(b), is considered to be indefinite to preclude us from applying the prior art for determining the question of obviousness under § 103. Accordingly, we are constrained to reverse the examiner's § 103 rejection of claim 24, as well as the § 103 rejection of dependent claims 25 through 27 and 29, under the holding in In re Steele, supra. As indicated infra, claims 25 through 27 and 29 contain additional indefinite language which precludes us from resolving the question of obviousness under § 103.
As for the § 103 rejection of dependent claim 28, to the extent that the subject matter encompassed by this claim is understandable, we cannot sustain the examiner's rejection thereof. Neither Oetiker '012 nor Oetiker '463 teaches or even remotely suggests the concept of providing the bridging portion with concavely curved sides as defined in claim 28.
Turning now to the double patenting rejection of claims 1 through 7 and 14 through 20, the examiner relies solely upon the subject matter of claims 1, 2, 7 and 8 in appellant's copending application Serial No. 922,473 to support his rejection. In particular, the examiner's position is that claims 1 through 7 and 14 through 20 in the subject application are broader than what the examiner refers to as "claims 8, 7, 2, 1" of the aforesaid copending application (see pages 6 and 7 of the answer).
Appellant does not dispute the examiner's contention that claims 1 through 7 and 14 through 20 are broader than the subject matter covered by claim 8 (which because of the dependency of claim 8, includes the subject matter of claims 1, 2 and 7). Instead, appellant correctly points out that the subject matter of the claims in the subject application are drawn to the subcombination of the deformable ear structure while the claims in the copending application are drawn to the combination of the ear structure and other elements including the hook means for interconnecting the ends of the clamping band.
*4 We have carefully considered the issues raised by the foregoing double patenting rejection of claims 1 through 7 and 14 through 20. As a result of our review, we conclude that this double patenting rejection cannot be sustained. Our reasons follow.
The test for obviousness-type double patenting is not whether the claims in one case are broader than claims in another case. Instead, the test is whether the claimed invention in the subject application would have been obvious from the subject matter of the claims in the other case (in this instance, appellant's copending application Serial No. 922,473) in light of the prior art. See In re Longi, 774 F.2d 1100, 225 USPQ 645 (Fed.Cir.1985).
In the present case, the examiner has neglected to make any findings as to the differences between the subject matter of claims 1 through 7 and 14 through 20 in the subject application and the subject matter encompassed by claim 8 of appellant's copending application. In the present case, it is evident that the claims in appellant's copending application differ from claims 1 through 7 and 14 through 20 in the subject application by reciting, inter alia, the hook means for closing the clamping band. The examiner has cited no prior art whatever for showing that this difference amounts to an obvious modification of the invention defined in claims 1 through 7 and 14 through 20. For these reasons, the double patenting rejection of claims 1 through 7 and 14 through 20 cannot stand.
We also cannot sustain the examiner's double patenting rejecting of claims 21 through 23 based upon the subject matter of claims 6, 2 and 1 of appellant's aforementioned copending application taken with Oetiker '584. There is nothing in Oetiker '584 to show that the addition of the cold-deformed and tab-like hooks, which are defined in claim 1 of the copending application, to the subject matter of claims 21 through 23 of the subject application would have amounted to an obvious modification of the invention defined in claims 21 through 23 of the subject application.
Under 37 C.F.R. 1.196(b), the following new ground of rejection is entered against the appealed claims:
Claims 1 through 29 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite and hence failing to particularly point out and distinctly claim the subject matter which appellant regards as his invention. With respect to the independent claims, namely claims 1, 16 and 24, our first difficulty stems from the recitation that the depression means occupies some area of the bridging portion in its "non-reinforced condition." It is not clear from appellant's specification what is meant by the "non-reinforced condition." Certainly, there is no antecedent basis in each of the independent claims for the recitation of the "non-reinforced condition." The claims simply fail to define what the non-reinforced condition is.
*5 With further reference to independent claims 1 and 16, our next difficulty with the claim language stems from the recitation that the depression means is "relatively shallow" (emphasis added). The term "relatively", as discussed in our decision in appellant's copending application Serial No. 922,473 (Appeal No. 88-3440), is a term of degree. When a word of degree is used, such as the term "relatively", it is necessary to determine whether a specification provides some standard for measuring that degree. See Seattle Box Company, Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 221 USPQ 568 (Fed.Cir.1984).
In the present case, there are no explicit guidelines in appellant's specification to enable one skilled in the art to distinguish the claimed structure from structures in which the depression means is not relatively shallow. Absent such guidelines, we are of the opinion that a skilled person would not be able to determine the metes and bounds of the claimed invention with the precision required by the second paragraph of § 112. See In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970).
With further regard to claim 1, our next difficulty with the claim language resides in the recitation that the depression means encompasses "substantial portions of the length and width of the bridging part...." The word "substantial" as used in this instance is also a word of degree for which we find no standard or guidelines in appellant's specification to enable one skilled in the art to distinguish the claimed structure from structures in which the depression means encompasses a portion of the bridging part that is not substantial. Again, absent such guidelines we are of the opinion that a skilled person would be unable to determine the metes and bounds of the claimed invention in evaluating the possibility of infringement and dominance. See In re Hammack, supra.
With further reference to claim 1, the use of the term "substantial" in the phrase "so that the total area of said depression means is a substantial portion of the area of the bridging part" is subject to the same criticism outlined supra with respect to the recitation of "substantial portions of the length and width of the bridging part...." Once again, we find no guidelines or standard in appellant's specification to determine if a given portion of the area of the bridging portion constitutes a "substantial portion" (emphasis added).
All things considered, because a patentee has the right to exclude others from making, using and selling the invention covered by a United States letters patent, the public must be apprised of what the patent covers, so that those who approach the area circumscribed by the claims of a patent may more readily and accurately determine the boundaries of protection in evaluating the possibility of infringement and dominance. See In re Hammack, supra.
*6 Referring again to claim 24, this claim is further indefinite in that the depression means appears to be twice claimed. It is first referred to as a "pan-shaped depression means" and next referred to as "a respective depression means." Likewise, the bottom portion of the depression means appears to be twice claimed in that the claim refers first to "a bottom portion" and then to "a respective bottom portion." Still further, there are no guidelines in appellant's specification to enable one skilled in the art to determine what constitutes a "major portion" of the length of the bridging portion and what constitutes a portion less than a "major portion."
Dependent claims 2 through 15 are subject to the same deficiencies discussed supra with respect to claim 1. Dependent claims 3 and 11 are further indefinite in that there are no guidelines in appellant's specification to enable one skilled in the art to distinguish bottom portions that are "at least nearly flat" from bottom portions that are not at least nearly flat. Also, there are no guidelines in appellant's specification to enable one skilled in the art to distinguish "a substantial part" of the length of the bottom portion from a part that is less than substantial.
Dependent claims 4, 5 and 23 are also rendered indefinite by reciting that the radii of curvature of the corners are "relatively small." Again, there are no guidelines in appellant's specification to enable one skilled in the art to distinguish relatively small radii of curvature from those radii of curvature that may be something other than relatively small.
As for dependent claims 6, 7, 15, 17 and 25, the phrase "non-reinforced condition" is indefinite for reasons discussed supra with respect to the independent claims.
Turning now to dependent claims 9 and 10, we have additional difficulty with the recitation that the sides of the bottom portion are "generally parallel" to the corresponding sides of the bridging part. As disclosed in appellant's specification and shown in appellant's drawings, the sides of the bridging part are deliberately provided with a concave curvature while the corresponding sides of the bottom portion are shown to be straight. In fact, claims 14 and 20 specifically recite that the sides of the briding part are concavely curved. In light of this disclosure, the recitation "generally parallel" must therefore be interpreted to be so broad as to cover concavely curved sides, on the one hand, and straight sides, on the other hand. If the claim language is given this interpretation, it is not clear what arrangements, if any, may be regarded as not being "generally parallel." Accordingly, the recitation that the sides of the bottom portion are generally parallel to corresponding sides of the bridging part is indefinite in that the metes and bounds involving the recitation of "generally parallel" cannot be determined with the degree of precision required in In re Hammack, supra.
*7 Dependent claims 19 and 27 are considered to be further indefinite in light of the recitation that the leg portions "have a length of the order of 5 mm,...." There are no guidelines in appellant's specification to enable one skilled in the art to determine whether or not a given leg portion has a length "of the order of 5 mm."
Finally, claim 29 is also rendered indefinite by the recitation of "a respective depression means." This constitutes the third recitation of a depression means when the subject matter added by claim 29 is read in conjunction with parent claim 24.
In summary, the decision of the examiner:
(a) to reject claims 1 and 16 through 18 under § 102 is reversed;
(b) to reject claims 2 through 13, 19 and 24 through 29 under § 103 is also reversed; and
(c) to reject claims 1 through 7 and 14 through 23 under the judicially created doctrine of obviousness-type double patenting is also reversed.
Additionally, a new ground of rejection has been entered against the appealed claims pursuant to 37 C.F.R. 1.196(b).
Any request for reconsideration or modification of this decision by the Board of Patent Appeals and Interferences based upon the same record must be filed within one month from the date of the decision (37 C.F.R. 1.197). Should appellant elect to have further prosecution before the examiner in response to the new rejection under 37 C.F.R. 1.196(b) by way of amendment or showing of facts, or both, not previously of record, a shortened statutory period for making such response is hereby set to expire two months from the date of this decision.
No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).
REVERSED 37 C.F.R. 1.196(b)
BOARD OF PATENT APPEALS AND INTERFERENCES
Examiner-in-Chief
William F. Pate, III
Examiner-in-Chief
Lawrence J. Staab
Examiner-in-Chief
FN1. See Webster's Third New International Dictionary (G. & C. Merriam Company, 1971).
APPENDIX
1. A clamp structure which comprises clamping band means and at least one ear means for tightening the clamping band means about an object to be fastened, the ear means including two leg portions generally extending outwardly from the band means and a bridging part between said leg portions which is provided with reinforcing means, characterized in that the reinforcing means is formed by depression means of generally pan-shaped, relatively shallow configuration in both its longitudinal and transverse directions, and the length and width of the depression means encompassing substantial portions of the length and width of the bridging part so that the total area of said depression means is a substantial portion of the area of the bridging part in its non-reinforced condition.
December 20, 1990
Harrison E. McCandlish
Examiner-in-Chief
ON REQUEST FOR RECONSIDERATION
*8 Appellant has requested reconsideration of our decision dated May 30, 1990, wherein we reversed all of the examiner's rejections and, pursuant to 37 CFR 1.196(b), entered a new ground of rejection of appealed claims 1 through 29 under the second paragraph of 35 USC 112. The new ground of rejection is the only rejection remaining in the application.
A summary of the indefinite claim language constituting the basis for our new ground of rejection under § 112 follows:
I. The expression "non-reinforced condition" (emphasis added) in independent claims 1, 16 and 24 and elsewhere.
II. The term "relatively" (emphasis added) in the phrase "generally pan- shaped, relatively shallow configuration" (emphasis added) in independent claims 1 and 16.
III. Both occurrences of the term "substantial" (emphasis added) in the phrase "the length and width of the depression means encompassing substantial portions of the length and width of the bridging part so that the total area of said depression means is a substantial portion of the area of the bridging part" (emphasis added) in claim 1.
IV. The term "nearly" (emphasis added) in the phrase "at least nearly flat" (emphasis added) in dependent claims 3 and 11.
V. The term "substantial" (emphasis added) in the phrase "at least nearly flat over a substantial part of its length" (emphasis added) in dependent claims 3 and 11.
VI. The term "relatively" (emphasis added) in the phrase "rounded-off corners with relatively small radii of curvature" (emphasis added) in dependent claims 4, 5 and 23.
VII. The phrase "generally parallel" (emphasis added) in the expression "the sides of the bottom portion are generally parallel to the corresponding sides of the bridging part" (emphasis added) in dependent claim 9.
VIII. The expression "of the order of" (emphasis added) in the phrase "leg portions have a length of the order of 5 mm" (emphasis added) in dependent claims 19 and 27. This expression complicates the definition of the distance by which the bottom portion is recessed from the non-recessed portion in claim 19. According to claim 19, this distance is defined as being less than the length of the order of 5 mm "but approaching the order of about 5 mm" (emphasis added). A similar problem occurs in claim 27.
IX. The term "major" (emphasis added) in the phrase "a respective bottom portion ... extending substantially flat over the major portion of the length of the bridging portion" (emphasis added) in independent claim 24.
X. The double recitation of "depression means" (emphasis added) in independent claim 24, first in the phrase "generally pan-shaped depression means" and second in the phrase "a respective depression means".
XI. The third recitation of "depression means" (emphasis added) in the phrase "a respective depression means" in claim 29 which indirectly depends from claim 24.
*9 XII. The double recitation of "bottom portion" (emphasis added) in independent claim 24, first as "a bottom portion" and second as "a respective bottom portion".
Most of the indefinite language summarized supra involves terms of degree or relative terms, as they are also called, such as "relatively", "substantial", and "major". In defense of this claim language, appellant argues on page 10 of the request for reconsideration that the use of the term "substantial" and presumably other terms of degree is proper, considering the "possible variations in the practice of the invention." With particular regard to the language pertaining to the radii of curvature, appellant goes on to contend on page 8 of the request for reconsideration that "[t]o require appellant to set forth all possible permutations of the radii ... would impose a burden on an inventor which is hardly intended by 35 U.S.C. § 112."
Admittedly, the fact that some claim language, such as the terms of degree mentioned supra, may not be precise, does not automatically render the claim indefinite and hence invalid under the second paragraph of § 112. Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 221 USPQ 568 (Fed.Cir.1984). Nevertheless, the need to cover what might constitute insignificant variations of an invention does not amount to a license to resort to the unbridled use of such terms without appropriate constraints to guard against the potential use of such terms as the proverbial nose of wax. [FN1]
In Seattle Box, the court set forth the following requirements for terms of degree:
When a word of degree is used the district court must determine whether the patent's specification provides some standard for measuring that degree. The trial court must decide, that is, whether one of ordinary skill in the art would understand what is claimed when the claim is read in light of the specification.
In Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 225 USPQ 634 (Fed.Cir.1985), the court added:
If the claims, read in light of the specifications [sic], reasonably apprise those skilled in the art both of the utilization and scope of the invention, and if the language is as precise as the subject matter permits, the courts can demand no more.
Even appellant concedes that the permissible use of terms of degree is subject to the condition that "those skilled in the art understand the scope of the patent, in light of the specification ..." (request for reconsideration, page 6). Appellant even agrees (see page 8 of the request for reconsideration) that when read in light of the specification, the claims must reasonably apprise those skilled in the art both of the utilization and scope of the invention ... (see Shatterproof Glass Corp., supra.
*10 Indeed, the fundamental purpose of a patent claim is to define the scope of protection [FN2] and hence what the claim precludes others from doing.
Having determined the requirements for the claim language in issue, the next question is whether on the record before us, those requirements are satisfied. We think not.
In defense of the term "relatively" in the phrase "generally pan-shaped, relatively shallow configuration", appellant argues that a person skilled in the art would clearly know what is meant by the expression "relatively shallow" (see request for reconsideration, page 5) and further that "the specification provides adequate standards for measuring that degree" (request for reconsideration, page 5). In support of the second part of the argument outlined supra, appellant points to the example defined in claim 19 as follows:
Claim 19, for example, specifies that the leg portions may have a length of the order of 5 mm. with the bottom portion spaced from the non-recessed bridging portion by a distance less than the length of the leg portions but approaching the order of about 5 mm. Thus, what is meant by "shallow" is clearly set out in the specification and claims as well as the drawings which leave no doubt that the bottom portion 26 must be shorter than the leg portions 21 of the ear. (emphasis in the original, request for reconsideration, pages 5 and 6)
Considering the first part of appellant's argument as outlined supra, the issue as to what those of ordinary skill in the art would know or understand requires evidence (such as a declaration or affidavit) as to whether they are reasonably apprised of the scope of the expression "relatively shallow" when the language is read in light of the specification. As stated by the court in Seattle Box Co., the trier of facts (in that instance the trial court) must decide whether one of ordinary skill in the art would understand what is claimed when the claim is read in light of the specification.
In the present case, appellant has chosen not to proffer any evidence as to whether those of ordinary skill in the art would be reasonably apprised of the scope of the phrase "relatively shallow" when the language is read in light of the specification. Instead, appellant here relies upon argument alone that "[a] person skilled in the art would clearly know what is meant by this term" (request for reconsideration, page 5). It is well settled, however, that arguments of counsel cannot take the place of evidence. See, for example, In re DeBlauwe, 736 F.2d 699, 222 USPQ 191 (Fed.Cir 1984).
As to the second part of appellant's argument as outlined supra, it is significant to observe that appellant points to no passage in the specification other than claim 19 to support his position. The specific example set forth in dependent claim 19 and the descriptive portion of the specification does not mean that the broader claims are imbued with the specific depth of the depression. In this regard, it is well settled that particular limitations or embodiments appearing in the specification will not be read into the broader claims. See, for example, Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 228 USPQ 90 (Fed.Cir.1985).
*11 Furthermore, appellant's specification does not disclose an intention by appellant to limit the meaning of the expression "relatively shallow" to the dimension defined in claim 19. Moreover, even the depth of the depression defined in claim 19 is vague and uncertain. When this claim is analyzed, it defines the depth of the depression as being a distance less than a length of the order of 5 mm, but approaching the order of about 5 mm. There are no guidelines in the specification to indicate what is meant by a dimension that is less than of the order of 5 mm but yet approaches the order of about 5 mm. Moreover, there is no evidence that one of ordinary skill in the art would be reasonably apprised of the scope of this limitation when read in light of the specification.
Furthermore, the indefinite language in question is not the term "shallow" alone as appellant suggests on page 6 of the answer and as quoted supra. Instead, the language in issue is the expression "relatively shallow" (emphasis added). The term "shallow", being itself a term of degree, requires interpretation as to its scope. However, in the present case, the difficulty in determining the scope of the claim language is compounded by the addition of the term "relatively", thus making it necessary to determine not merely what is shallow, but what is relatively shallow. This expression means nothing without having some concept of the threshold between depths that are relatively shallow and depths that are more than relatively shallow. In the case before us, there are no guidelines or standards in the specification that would reasonably apprise one skilled in art of that threshold. As such, the expression "relatively shallow" is, on the record before us, of indeterminate scope.
With regard to the recitation of the term "substantial" in claim 1 (see item III, supra), appellant's only arguments is that the term is used in its "ordinary meaning" (request for reconsideration, page 6) and further that the term is not indefinite "considering possible variations in the practice of the invention, as long as those skilled in the art understand the scope of the patent, in light of the specification ..." (request for reconsideration, page 6).
There certainly is no evidence in the record before us of any "variations in the practice of the invention", much less what those skilled in the art would have understood the scope of the claim language to be. The fact that the term "substantial" may be used in its ordinary meaning does not mean that it is not indefinite. The question here is how is one skilled in the art to determine what dimensions are encompassed by "substantial portions of the length and width of the bridging part" (emphasis added; claim 1) and what areas constitute "a substantial portion of the area of the bridging part" (emphasis added; claim 1).
Appellant here has pointed to no specific passages in the specification as guidelines or standards for providing some measure of what may be substantial or not substantial. Additionally, appellant has proffered no evidence to support the contention that in reading the claims in light of the specification, those skilled in the art would be reasonably apprised of the scope of the claimed subject matter in question.
*12 Considering next the expression "at least nearly flat" in claims 3 and 11 (see item IV, supra), appellant merely offers that if this phrase is read in light of the specification on page 5, lines 16-18, it should "pose no problem to a person skilled in the art" (request for reconsideration, page 7). This part of the specification is as follows:
"However, if so desired, the bottom part may also have a slight curvature, particularly a concave curvature with [sic, a] relatively large radius of curvature." (emphasis added)
The foregoing guideline is as vague as the claim language itself, for it requires an interpretation as to what is meant not merely by a large radius of curvature but a "relatively large radius of curvature" (emphasis added). As such, the specification offers no standards to establish a threshold or demarcation between radii of curvature that may be relatively large and radii of curvature that may be less than relatively large. Hence, those skilled in the art would not be apprised of the radius of curvature at which the bottom becomes too curved to be considered as being at least nearly flat.
As for the use of the term "substantial" in the phrase "at least nearly flat over a substantial part of its length" (dependent claims 3 and 11), appellant's only argument is that the use of the term "substantial" in this context "poses no problem to a person skilled in the art and defines the present invention in terms that would pose no problems to a person skilled in the art making or using the invention" (request for reconsideration, page 7). [FN3]
First of all, the issue raised by our rejection under the second paragraph of § 112 is not whether the claim language would pose any problem to one skilled in the art in "making or using the invention" as stated by appellant. Rather, the question here is whether one skilled in the art would be reasonably apprised of the scope of the claim in light of the use of the word "substantial" and other terms of degree discussed herein.
In any event, appellant has, once again, proffered no evidence in support of the contention that the language would pose no problem to those skilled in the art. At the risk of being repetitive, we again state that arguments of counsel cannot take the place of evidence. In re DeBlauwe, supra.
As with the term "nearly" the term "substantial" in the phrase "at least nearly flat over a substantial part of its length" requires a determination as to what is a substantial part of the length of the bottom portion as distinguished from an insubstantial part of the length of the bottom portion. Like the other terms of degree used in the claims, no standards or guidelines for the term "substantial" are found in appellant's specification.
Turning now to the use of the term "relatively" in dependent claims 4, 5 and 23 for defining the radii of curvature of the rounded off corners (see item VI, supra), this recitation of the term "relatively" partakes of the same difficulties encountered with the use of the same term in the phrase "relatively shallow" (see item II, supra). Not only must one skilled in the art determine the scope of the word "small", which itself is a term of degree, but additionally must determine the scope of a radius that is relatively small.
*13 Once again, appellant has pointed to no standards or guidelines for enabling one skilled in the art to reasonably establish what may be construed as being not just small, but "relatively small" (emphasis added). Instead, appellant urges on pages 7 and 8 of the request for reconsideration that certain requirements including the angular relationship of the connecting portions 28 to the bottom portion of the ear inherently imposed constraints on the radii of curvature. We fail to see, however, how this would establish the standards or guidelines required by Seattle Box, supra.
Considering next the phrase "generally parallel" in dependent claim 9 (see item VII, supra), appellant's only argument is as follows:
The word "generally" modifies the word "parallel" so that a strict parallelism is not required but a type of parallelism as shown in Figures 3 and 4 is encompassed thereby. (request for reconsideration, page 8)
In the present case, the sides of the bottom portions are intentionally provided with a significant curvature to define a concave configuration. Thus, when the expression "generally parallel" is read in light of this part of the specification, it must be interpreted so broadly as to include significant concave curvatures. Thus, the question becomes at what threshold or point does the configuration of the walls cease to become generally parallel to fall outside of the scope of the claim if it is required to be so broad as to include configurations having a significant concave curvature. Appellant does not refer to any standard or guideline in the specification for making this determination. Nor has appellant proffered any evidence that one of ordinary skill in the art would be reasonably apprised of the scope of this limitation.
Considering next the expression "of the order of" (see item VIII, supra) in dependent claims 19 and 27, appellant's only argument is that the expression is well known and frequently used in scientific language and "refers to 5 mm. plus or minus a small deviation" (request for reconsideration, page 8). No standard or guideline, however, is given as to what that "small deviation" may be. Nor is there any evidence that one of ordinary skill in the art would be reasonably apprised of what that small deviation would be.
Moreover, it is not just a question of the uncertainty of this expression in the abstract but in the context used in dependent claim 19. Here, the claim effectively requires that the distance in question is less than the length of the leg portions and hence less than a length of the order of 5 mm., but approaching "the order of about 5 mm" (dependent claim 19). Thus, not only is the distance in question required to approach the order of about 5 mm, but it is also required to have a value that is less than the order of 5 mm. Nothing herein would reasonably apprise one skilled in the art of the scope of such a limitation.
Concerning the recitation of the term "major" (see item IX, supra) in dependent claim 24, the only argument advanced by appellant is that "this term clearly describes the present invention as set forth in the specification" (request for reconsideration, page 7). In attempting to determine the scope of this limitation, it is necessary to determine what may constitute a major portion of the length of the bridging portion as compared with something less than the major portion of the length of the bridging portion. Appellant has pointed to no particular passage in the specification to serve as a standard or guideline for ascertaining the scope of this limitation. Nor has appellant proffered any evidence that one skilled in the art would be reasonably apprised of the scope of this limitation when the language is read in light of the specification.
*14 With regard to the double recitation of the depression means in claim 24 (see item X, supra) and for a third time in dependent claim 29 (see item XI, supra), appellant's only explanation as set forth on page 7 of the request for reconsideration is that the term could be used "either in the singular or plural." We cannot agree that this is an appropriate interpretation. When this claim language is read in light of the specification it cannot be construed as meaning depressions in the plural, since only one depression is shown and described in the specification.
Since appellant has chosen not to amend the phrase "a respective depression means" in claim 24 and also in claim 29 to refer back to the first claimed depression means (i.e., the generally pan-shaped depression means of claim 24), it leaves uncertain as to how the second and third recitations of the depression means are to be interpreted, thus rendering the claimed subject matter indefinite. The same analysis applies to the double recitation of the "bottom portion" in claim 24 (see item XII, supra).
Turning now to the expression "non-reinforced condition" in the independent claims and elsewhere (see item I, supra), the problem is not so much that the limitation lacks antecedent basis. Rather, as observed on page 8 of our decision, it is not clear from appellant's specification what is meant by the "non-reinforced condition." In fact, appellant puts his finger on part of the problem by emphasizing that the claims refer to the bridging portion in "its non-reinforced condition" (emphasis added) as if there is only one possible condition that constitutes a non-reinforced condition.
We are now told, post-hoc, that the recitation of the non-reinforced condition "refers to the total area of the bridging portion before it is reinforced" (request for reconsideration, page 9). There are, however, other interpretations. For example, the non-reinforced condition of the bridging portion may very well be interpreted to mean some undeformed or perhaps undepressed configuration of the bridging portion.
The difficulty here is that appellant's specification presents no definition or description of what is meant by "its non-reinforced condition." Certainly, the specification contains no definition corresponding to that now proffered by appellant on page 9 of the request for reconsideration, let alone any of the other possibilities that might constitute a non-reinforced condition of the bridging portion. As a result, the expression "its non-reinforced condition" is indefinite because it is open to a number of different interpretations to render the scope of the claims indeterminate.
Certainly, we do not dispute that appellant may be his own lexicographer. However, the patent specification must support the asserted definition or definitions, as the case may be. Jonsson v. Stanley Works, 903 F.2d 812, 14 USPQ2d 1863 (Fed.Cir.1990). In the present case, the presently asserted definition for the phrase "its non-reinforced condition" is not supported by appellant's specification.
*15 As far as our new rejection based on indefiniteness is concerned, the question of obviousness of the claimed subject matter, as argued, for example, on page 4 of the request for reconsideration (which contains a discussion about the patentability of the claimed invention over the prior Patent No. 3,402,436) or on page 10 of the request for reconsideration (which involves a discussion of evidence of nonobviousness) is not relevant. As in the case before us, if no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become and, in the present case, is not asserted to be obvious. Instead, the claim becomes indefinite. In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970). Accordingly, arguments pertaining to the patentability of the claims over the prior art are without merit as far as the present rejection is concerned.
Furthermore, contrary to appellant's arguments as set forth on page 6 of the request for reconsideration, the principles set forth in In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970) are applicable here.
The Hammack court stressed, and we quote:
All provisions of the statute must be complied with in order to obtain a patent. The requirement stated in the second paragraph of section 112 existed long before the present statute came into force. Its purpose is to provide those who would endeavor, in future enterprise, to approach the area circumscribed by the claims of a patent, with the adequate notice demanded by due process of law, so that they may more readily and accurately determine the boundaries of protection involved and evaluate the possibility of infringement and dominance. (cites omitted)
Thus, the definiteness of a claim is of substantial importance to allow others who wish to enter the marketplace to ascertain the boundaries of protection that are provided by the claims upon issuance of a patent. See, generally, Ex parte Kristensen, 10 USPQ2d 1701, 1703 (BPAI 1989). In practice, this means that the claims of a patent must be sufficiently clear and definite to enable a practitioner, with the appropriate input from those skilled in the art concerning interpretation of claim language, to advise a client about infringement and validity. In short, the claims must set out and circumscribe a particular area (i.e., that which others are precluded from doing) with a reasonable degree of precision and particularity. In re Moore, 439 F.2d 1232, 169 USPQ 236 (CCPA 1971). Accordingly, compliance with the second paragraph of § 112 may not be treated lightly as the public interest is involved. In the present case, the appealed claims do not meet the requirements in the second paragraph of § 112.
Finally, as for appellant's request for rehearing, the governing rules of practice do not provide for such a rehearing. Indeed, entry of a new rejection under 37 CFR 1.196(b) is no reason by itself to grant a rehearing, let alone an en banc rehearing as appellant requested. Certainly, there is no special question of law or fact that would justify a rehearing in this instance. Accordingly, appellant's request for rehearing is denied.
*16 Appellant's request for reconsideration has been granted to the extent that we have reviewed our prior decision. It is denied insofar as it seeks any change in that decision based on the record before us.
No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, (1989), 1105 O.G. 5 (August 1, 1989).
BOARD OF PATENT APPEALS AND INTERFERENCES
Harrison E. McCandlish,
Examiner-in-Chief
William F. Pate, III,
Examiner-in-Chief
Lawrence J. Staab,
Examiner-in-Chief
FN1. See White v. Dunbar, 119 US 47, 51-52 (1886) and Townsend Engineering Co. v. HiTec Co. Ltd., 829 F.2d 1086, 4 USPQ2d 1136, 1139 (Fed.Cir.1987).
FN2. See In re Vamco Machine & Tool, Inc., 752 F.2d 1564, 224 USPQ 617 (Fed.Cir.1985).
FN3. These are the only grounds which appellant asserts in support of his position that we erred in our rejection. Note Keebler Co. v. Murray Bakery Products, 866 F.2d 1386, 9 USPQ2d 1736 (Fed.Cir.1989).
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