23 U.S.P.Q.2d 1651
`1990 WL 391124 (Bd.Pat.App. & Interf.), 23 U.S.P.Q.2d 1651
`(Cite as:23 U.S.P.Q.2d 1651)
`
`Page 1
`
`Ex parte Oetiker No. 88-3256
`
`U.S. Patent and Trademark Office Board of Patent Ap-
`peals and Interferences
`Decided May 30, 1990 Reconsidered December 20,
`1990
`
`Released January 14, 1992
`
`United States Patents Quarterly Headnotes
`
`PATENTS
`[1] Patent construction -- Specification and drawings --
`Defining terms (Section 125.1103)
`Patent construction -- Claims -- Defining terms (Section
`125.1305)
`Words in claim are generally not limited in their mean-
`ing to what is shown in disclosure, especially in non-
`chemical cases; thus, “pan-shaped depression” is not re-
`quired to be broad and shallow, and is not required to
`have flat bottom, as shown in drawing of subject applic-
`ation.
`
`PATENTS
`[2] Patentability/Validity -- Obviousness -- In general
`(Section 115.0901)
`Test
`for obviousness-type double patenting is not
`whether claims in one case are broader than claims in
`another case; instead, test is whether claimed invention
`in subject application would have been obvious from
`subject matter of claims in other case in light of prior
`art.
`
`PATENTS
`[3] Patentability/Validity -- Specification -- Claim ad-
`equacy (Section 115.1109)
`Claim language which states that depression means is
`“relatively shallow,” without any guidelines in specific-
`ation to enable one skilled in art to distinguish claimed
`structure from structures in which depression means is
`not relatively shallow, is indefinite; language stating
`that depression means encompasses “substantial” por-
`tions of length and width of bridging part is also indef-
`inite, since “substantial” is term of degree, and specific-
`
`ation lacks guidelines necessary when such term is
`used.
`
`PATENTS
`[4] Patentability/Validity -- Specification -- Claim ad-
`equacy (Section 115.1109)
`Applicant's assertion that person skilled in art “would
`clearly know” what claim language “relatively shallow”
`means, when read in light of specification, is not suffi-
`cient to demonstrate that such term is not indefinite,
`since arguments of counsel cannot take place of evid-
`ence.
`
`PATENTS
`[5] Patentability/Validity -- In general (Section 115.01)
`Arguments pertaining to patentability of claims over
`prior art are irrelevant in view of rejection of claims as
`indefinite, since if no reasonably definite meaning can
`be ascribed to certain terms in claim, subject matter
`does not become obvious.
`
`PATENTS
`[6] Patentability/Validity -- Specification -- In general
`(Section 115.1101)
`Compliance with 35 USC 112, second paragraph, is not
`to be treated lightly, since public interest is involved, in
`that definiteness of claims allows others who wish to
`enter marketplace to ascertain boundaries of protection
`that are provided upon issuance of patent.
`
`Appeal from examiner's rejection of claims 1 through
`29 (Kenneth J. Dorner, supervisory primary examiner,
`L. Cranmer, examiner).
`
`Application for patent filed Oct. 23, 1986, by Hans Oet-
`iker, serial no. 922,408, a continuation of serial no.
`622,764,
`filed June 20, 1984 (deformable ear
`for
`clamps). From rejection of claims, applicant appeals.
`Examiner's rejections reversed; new ground of rejection
`entered.
`
`Paul M. Craig, Jr., Washington, D.C., for appellant.
`
`Before McCandlish, Pate,
`in-chief.
`
`and Staab,
`
`examiners-
`
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`
`

`
`23 U.S.P.Q.2d 1651
`1990 WL 391124 (Bd.Pat.App. & Interf.), 23 U.S.P.Q.2d 1651
`(Cite as:23 U.S.P.Q.2d 1651)
`
`Page 2
`
`McCandlish, examiner-in-chief.
`
`provements in the ear.
`
`This appeal is from the examiner's rejection of claims 1
`through 29, which are all of the claims in the applica-
`tion.
`
`Claim 1 is representative of the appealed subject matter.
`A copy of this claim, as it appears in appellant's brief, is
`appended hereto.
`
`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 ap-
`pellant refers to in his specification and brief as an
`“Oetiker ear.” The claimed invention is directed to im-
`
`The examiner relies upon the following references in
`support of his rejections of the appealed claims:
`
`Oetiker (Oetiker '463)
`Oetiker (Oetiker '584)
`Oetiker (Oetiker '012)
`
`3,789,463
`4,237,584
`4,299,012 Nov. 10, 1981
`
`Feb. 5, 1974
`Dec. 9, 1980
`
`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 re-
`jected under the judicially-created doctrine of obvious-
`ness-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 un-
`der 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.
`992,473” (answer, page 7).
`
`In addition to the foregoing rejections carried forward
`from the final office action (Paper No. 2), the following
`new grounds of *1653 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 un-
`der 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).
`
`[1] Considering first the Section 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 lan-
`
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`
`

`
`23 U.S.P.Q.2d 1651
`1990 WL 391124 (Bd.Pat.App. & Interf.), 23 U.S.P.Q.2d 1651
`(Cite as:23 U.S.P.Q.2d 1651)
`
`Page 3
`
`guage 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, espe-
`cially in non-chemical cases, such as the case at bar, the
`words in a claim are generally not limited in their mean-
`ing 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 reason-
`able interpretation, it reads on the depression 17 shown
`in Figure 15 of Oetiker '012. The mere fact that the de-
`pression 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 gener-
`ally pan-shaped configuration.
`
`With further regard to the Section 102 rejection of
`claims 1 and 16, appellant argues that Oetiker '012 does
`not disclose that the depression means is relatively shal-
`low. However, for reasons stated infra in our new rejec-
`tion 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 condi-
`tion” 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 exam-
`iner's Section 102 rejection of claims 1 and 16, as well
`as the Section 102 rejection of claims 17 and 18, which
`are directly or indirectly dependent from claim 16, un-
`der the holding in In re Steele, 305 F.2d 859, 134 USPQ
`292 (CCPA 1962). For the same reasons we are con-
`strained to reverse the examiner's Section 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 Section 103 rejection of claim 19, which de-
`pends 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.
`
`Regarding the Section 103 rejection of claim 10, to the
`extent that the subject matter encompassed by this claim
`is understandable, we cannot sustain the examiner's re-
`jection thereof. Apparently conceding that Oetiker '012
`does not disclose the claimed angular relationship of the
`connecting portions to the bottom portion of the depres-
`sion means, the examiner relies upon Figure 4 of Oet-
`iker '584 for a teaching of the subject matter added by
`claim 10. However, Figure 4 and the other relevant il-
`lustrations in Oetiker '584 are simply too vague to de-
`termine whether the angle of the connecting portions
`differ from a right angle by no more than about 20 de-
`grees as called for in claim 10. Furthermore, the spe-
`cification 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 Section 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 con-
`tains other language which, for reasons stated infra in
`our new rejection under 37 C.F.R. 1.196(b), is con-
`sidered to be indefinite to preclude us from applying the
`prior art for determining the question of obviousness
`under Section 103. Accordingly, we are constrained to
`reverse the examiner's Section 103 rejection of claim
`24, as well as the Section 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
`*1654 precludes us from resolving the question of obvi-
`ousness under Section 103.
`
`As for the Section 103 rejection of dependent claim 28,
`to the extent that the subject matter encompassed by this
`claim is understandable, we cannot sustain the exam-
`iner's rejection thereof. Neither Oetiker '012 nor Oetiker
`'463 teaches or even remotely suggests the concept of
`
`COPR. (C) 2012 The Bureau of National Affairs, Inc.
`
`

`
`23 U.S.P.Q.2d 1651
`1990 WL 391124 (Bd.Pat.App. & Interf.), 23 U.S.P.Q.2d 1651
`(Cite as:23 U.S.P.Q.2d 1651)
`
`Page 4
`
`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 posi-
`tion 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 copend-
`ing 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 be-
`cause 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.
`
`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.
`
`[2] 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 sub-
`ject matter of claims 6, 2 and 1 of appellant's aforemen-
`tioned copending application taken with Oetiker '584.
`There is nothing in Oetiker '584 to show that the addi-
`tion 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 modi-
`fication 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.
`
`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
`
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`
`

`
`23 U.S.P.Q.2d 1651
`1990 WL 391124 (Bd.Pat.App. & Interf.), 23 U.S.P.Q.2d 1651
`(Cite as:23 U.S.P.Q.2d 1651)
`
`Page 5
`
`discussed in our decision in appellant's copending ap-
`plication Serial No. 922,479 (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).
`
`[3]*1655 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 re-
`latively shallow. Absent such guidelines, we are of the
`opinion that a skilled person would not be able to de-
`termine the metes and bounds of the claimed invention
`with the precision required by the second paragraph of
`Section 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 de-
`pression 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 per-
`son 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 out-
`lined 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 ap-
`pellant's specification to determine if a given portion of
`the area of the bridging portion constitutes a “substan-
`tial portion” (emphasis added).
`
`All things considered, because a patentee has the right
`to exclude others from making, using and selling the in-
`vention 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 de-
`termine the boundaries of protection in evaluating the
`possibility of infringement and dominance. See In re
`Hammack, supra.
`
`Referring again to claim 24, this claim is further indef-
`inite in that the depression means appears to be twice
`claimed. It is first referred to as a “pan-shaped depres-
`sion means” and next referred to as “a respective de-
`pression 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 en-
`able 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 indef-
`inite 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 dis-
`cussed supra with respect to the independent claims.
`
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`
`

`
`23 U.S.P.Q.2d 1651
`1990 WL 391124 (Bd.Pat.App. & Interf.), 23 U.S.P.Q.2d 1651
`(Cite as:23 U.S.P.Q.2d 1651)
`
`Page 6
`
`Turning now to dependent claims 9 and 10, we have ad-
`ditional difficulty with the recitation that the sides of
`the bottom portion are “generally parallel” to the corres-
`ponding sides of the bridging part. As disclosed in ap-
`pellant's specification and shown in appellant's draw-
`ings,
`the sides of the bridging part are deliberately
`provided with a concave curvature while the corres-
`ponding sides of the bottom portion are shown to be
`straight. In fact, claims 14 and 20 specifically recite that
`the sides of the bridging part are concavely curved. In
`light of this disclosure, the recitation “generally paral-
`lel” 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 arrange-
`ments, if any, may be regarded as not being “generally
`parallel.” Accordingly, the recitation that the sides of
`the bottom portion are generally parallel to correspond-
`ing 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 preci-
`sion required in In re Hammack, supra.
`
`*1656 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 recit-
`ation of “a respective depression means.” This consti-
`tutes 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 Section
`102 is reversed;
`
`(b) to reject claims 2 through 13, 19 and 24 through 29
`under Section 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.
`
`rejection has been
`Additionally, a new ground of
`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 Interfer-
`ences 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 prosecu-
`tion before the examiner in response to the new rejec-
`tion 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 con-
`nection 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)
`
`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 extend-
`ing outwardly from the band means and a bridging part
`between said leg portions which is provided with rein-
`forcing means, characterized in that
`the reinforcing
`means is formed by depression means of generally pan-
`shaped, relatively shallow configuration in both its lon-
`gitudinal 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 substan-
`tial portion of the area of the bridging part in its non-
`reinforced condition.
`
`ON REQUEST FOR RECONSIDERATION December
`
`COPR. (C) 2012 The Bureau of National Affairs, Inc.
`
`

`
`23 U.S.P.Q.2d 1651
`1990 WL 391124 (Bd.Pat.App. & Interf.), 23 U.S.P.Q.2d 1651
`(Cite as:23 U.S.P.Q.2d 1651)
`
`Page 7
`
`20, 1990
`
`bridging part” (emphasis added) in dependent claim 9.
`
`Appellant has requested reconsideration of our decision
`dated May 30, 1990, wherein we reversed all of the ex-
`aminer'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 re-
`maining in the application.
`
`A summary of the indefinite claim language constitut-
`ing the basis for our new ground of rejection under Sec-
`tion 112 follows:
`
`I. The expression “non-reinforced condition” (emphasis
`added) in independent claims 1, 16 and 24 and else-
`where.
`
`II. The term “relatively” (emphasis added) in the phrase
`“generally pan-shaped, relatively shallow configura-
`tion” (emphasis added) in independent claims 1 and 16.
`
`the term “ substantial ”
`III. Both occurrences of
`(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 por-
`tion 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
`
`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 *1657 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.
`
`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 in-
`volves 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, appel-
`lant goes on to contend on page 8 of the request for re-
`consideration 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
`
`COPR. (C) 2012 The Bureau of National Affairs, Inc.
`
`

`
`23 U.S.P.Q.2d 1651
`1990 WL 391124 (Bd.Pat.App. & Interf.), 23 U.S.P.Q.2d 1651
`(Cite as:23 U.S.P.Q.2d 1651)
`
`Page 8
`
`U.S.C. Section 112.”
`
`Admittedly, the fact that some claim language, such as
`the terms of degree mentioned supra , may not be pre-
`cise, does not automatically render the claim indefinite
`and hence invalid under the second paragraph of Sec-
`tion 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 con-
`stitute 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. FN2
`
`In Seattle Box, the court set forth the following require-
`ments 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 lan-
`guage is as precise as the subject matter permits, the
`courts can demand no more.
`
`the permissible use of
`Even appellant concedes that
`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 reconsidera-
`tion, 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
`. (see Shatterproof Glass Corp.,
`of the invention .
`.
`supra.
`
`Indeed, the fundamental purpose of a patent claim is to
`
`define the scope of protectionFN3 and hence what the
`claim precludes others from doing.
`
`Having determined the requirements for the claim lan-
`guage in issue, the next question is whether on the re-
`cord before us, those requirements are satisfied. We
`think not.
`
`the term “relatively” in the phrase
`In defense of
`“generally pan-shaped,
`relatively shallow configura-
`tion”, 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 ad-
`equate 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 bot-
`tom portion spaced from the non-recessed bridging por-
`tion by a distance less than the length of the leg portions
`but approaching the order of *1658 about 5 mm. Thus,
`what is meant by “shallow” is clearly set out in the spe-
`cification and claims as well as the drawings which
`leave no doubt that the bottom portion 26 must be short-
`er 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 out-
`lined 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 s