# Application of Carl F. Swinehart and Marko Sfiligoj

> Court of Customs and Patent Appeals · April 1, 1971 · 439 F.2d 210

URL: https://www.frixlaw.com/law-library/cases/9456603

## Case

- **Full name:** Application of Carl F. SWINEHART and Marko Sfiligoj
- **Court:** Court of Customs and Patent Appeals
- **Decided:** April 1, 1971
- **Citations:** 439 F.2d 210; 58 C.C.P.A. 1027
- **Precedential status:** Published
- **Opinion:** Dissent by Almond
- **Judges:** Lane, Almond, Rich, Baldwin, Newman
- **Cited by:** 43 later opinions in the Frix Law Library

## Citator (automated)

- **Yellow flag:** Disagreed with by In Re Hauserman, Inc, 892 F.2d 1049 (1989).
- Negative treatments: 1
- Distinguished by: 0
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/9456603

## How later opinions describe it (automated extraction)

- holding that the term “transparent” was definite because the disclosure, which showed that a substantial amount of infrared radiation was always transmitted even though the precise degree of transparency varied depending on certain factors, was sufficiently clear
- holding that a functional limitation covers all embodiments performing the recited function

## Opinion text

ALMOND, Judge
(dissenting).
I agree with everything in the majority opinion except the conclusion that appellants’ use of the phrase “transparent to infra-red rays” in claim 34 does not make the claim indefinite. The majority apparently would define “transparent” as “substantially transparent” or as transmitting “a substantial amount of infrared radiation.” This is necessary since accepting a dictionary definition such as “transmitting light” or “opposed to opaque” would raise the question of what there is in the mere word “transparent” to distinguish the claim from the prior art compositions which appellants have characterized as being only “substantially” opaque (indicating that some light may be transmitted).
Even reading the limitation “substantially transparent” into the claim, which is of questionable propriety since a claim should be given the broadest interpretation reasonable during prosecution (see In re Prater, 415 F.2d 1393 , 56 C.C.P.A. 1381 (1969)), does not in my opinion make the claim definite. When does a eutectic composition stop being “substantially opaque” and become “substantially transparent”? The mere fact that there is no definite answer to this question means to me that the claim is indefinite. The second paragraph of 35 U.S.C. § 112 requires that the claim point out the invention with more .particularity than was done here, and this is especially significant since “the exact point of novelty between appellants’ claimed composition and that of the prior art is transparency.” Since no; clear metes and bounds have been set *216 forth, it appears to me that the solicitor was right in stating that:
* * * the lower limits of the claimed product are not fixed as to percent transmission and band of wave-lengths transmitted, and one would not know whether a product is “transparent to infrared rays”, and therefore would infringe the claims, if the product transmits less infrared than is shown in Fig. 2.
I would, therefore, affirm the decision of the board.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9456603. Public record. Not legal advice.