Oetiker, In re

• Citation: 951 F.2d 1267
• Decision Date: 27 December 1991
• Docket Number: Nos. 91-1181,91-1221,s. 91-1181
• Parties: NOTICE: Federal Circuit Local Rule 47.8(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order. In re Hans OETIKER.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1267

951 F.2d 1267

23 U.S.P.Q.2d 1661

NOTICE: Federal Circuit Local Rule 47.8(b) states that opinions and orders which are designated as not citable as precedent shall not be employed or cited as precedent. This does not preclude assertion of issues of claim preclusion, issue preclusion, judicial estoppel, law of the case or the like based on a decision of the Court rendered in a nonprecedential opinion or order.

In re Hans OETIKER.

Nos. 91-1181, 91-1221.

United States Court of Appeals, Federal Circuit.

Dec. 27, 1991.

Rehearing Denied March 10, 1992.

Before ARCHER, Circuit Judge, COWEN, Senior Circuit Judge, and CLEVENGER, Circuit Judge.

DECISION

ARCHER, Circuit Judge.

Hans Oetiker appeals the decisions of the Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (board) in two cases, Nos. 88-3256 and 88-3440, holding all the claims (1-29) of application serial number 06/922,408 and claims 1-15 and 17-20 of application serial number 06/922,473 unpatentable as indefinite under 35 U.S.C. § 112, second paragraph. Claim 16 of the latter application was held unpatentable under 35 U.S.C. § 102(b), and claim 6 was also provisionally rejected on the basis of obviousness-type double patenting. ¹ We affirm.

DISCUSSION

Oetiker's inventions in the two applications relate to a clamp structure generally and to a clamp structure with mechanical interconnecting means including hooking means. Because the board's rationale supporting the 35 U.S.C. § 112 rejections for indefiniteness and the specific claim language at issue in both cases is substantially identical, we discuss the cases together.

The statutory requirement of claim definiteness provides that a patent applicant particularly point out and distinctly claim the subject matter of his invention. 35 U.S.C. § 112, second paragraph. A decision as to claim indefiniteness requires a determination whether those skilled in the art would understand what is claimed. Amgen Inc. v. Chugai Pharmaceutical Co. Ltd., 927 F.2d 1200, 1217, 18 USPQ2d 1016, 1030 (Fed.Cir.1991).

The board recognized that some imprecision in a claim does not necessarily render the claim indefinite under 35 U.S.C. § 112. In this case, however, the board found the claims indefinite because a person skilled in the art could not determine the metes and bounds of the claimed invention. It determined that a number of terms of degree in the claims were without proper definitional guidelines in the specification and that there were multiple inclusions of claim elements or the lack of proper antecedent basis.

The board relied on Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 574 (Fed.Cir.1984), which explained that when a word of degree is used in a claim, the specification must provide some standard for measuring that degree.

The board looked to the...