Appeal No. 1996-1897
Application 08/064,145
shape is used to prevent shrinkage cracks from occurring due to the use of a plastic enclosure” while
admitting that “such shrinkage cracks are not a concern [to Wendt] because it makes use of 90%
inorganic filler material to prevent such shrinkage cracks” (brief, page 8). We cannot agree with
appellants’ position because the purpose of both Mushardt and Wendt is to form an enclosure to orient
the workpiece for processing in a machine tool or tools, which purpose is shared by appellants as seen,
for example, from the preamble to appealed claim 12 which specifies “[a] form-fitting cast-on enclosure
arrangement having parallel chucking surfaces for fixing an irregular contoured metal work piece for
processing” (emphasis supplied). Even if appellants did express a different purpose for employing the
plastic material of Wendt in place of the metal material of Mushardt, we are of the view that one of
ordinary skill in this art would have been reasonably motivated to use the plastic material of Wendt in
enclosure arrangements shown by the combined teachings of Mushardt and Wendt for the purpose of
orienting the work piece in the manner noted by appellants. See In re Kemps, 97 F.3d 1427, 1429-
30, 40 USPQ2d 1309, 1311-12 (Fed. Cir, 1996); In re Dillon, 919 F.2d 688, 692-94, 16
USPQ2d 1897, 1901-02 (Fed. Cir. 1990)(in banc).
Turning now to appellants’ arguments submitted with respect to certain of the appealed claims,
we find that appellants’ admission that the plastic material containing reinforcing fillers disclosed by
Wendt forms crack-free enclosures, as specified by certain of the appealed claims, indeed is supported
by the teaching in this reference that the injection molded enclosure shrinks during setting (page 2, lines
119-124). For the reasons set forth above, we cannot agree with the arguments advanced by
appellants with respect to appealed claims 28 and 29 that the plastic material containing reinforcing
fillers, including polystyrene, of Wendt is excluded from appealed claims 12, 13, 28 and 29 by the
transitional term “comprising” or the transitional phrase “consisting of” (brief, pages 8-9). We further
find that, on this record, the claimed processes encompassed by appealed claims 26 and 27 are not
distinguished over the applied prior art by reason of the “plastic material” used therein (id., pages 10-
11). While Wendt does not disclose that the plastic material containing a reinforcing filler used to
prepare the enclosures disclosed therein can be “substantially reusable” as specified in claim 26, we find
no evidence in this record that a molded thermoplastic material containing such a filler would not be
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