Appeal No. 1998-2077
Application 08/553,324
WARREN, Administrative Patent Judge, Dissenting:
I respectfully disagree with the decision of a majority of this panel to reverse the decision of the
examiner because I am of the opinion that the claimed methods encompassed by the appealed claims
would have been obvious under 35 U.S.C. § 103 over the combined teachings of Backlund, Lundgren
and Lindberg to one of ordinary skill in this art at the time the claimed invention was made, for the
following reasons.
In giving the terms of the claims the broadest reasonable interpretation consistent with
appellants’ specification as it would be interpreted by one of ordinary skill in this art, In re Morris, 127
F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997), I find that the plain language of claim
1 makes it clear that the claimed method comprises the steps of adjusting chemical paper pulp to a pH of
between 1 and 6, subsequently treating the pulp with ozone to reduce the kappa number thereof,
immediately thereafter treating the pulp with a chelating agent without an intervening washing step, adding
an alkali to the pulp with or after the addition of the chelating agent to attain a pH exceeding 3,
subsequently washing the pulp at some point, and further subsequently bleaching the pulp with peroxide
at some point. In the shorthand notation used by the panel (see above pp. 3-4), appellants (brief, pages
7-8; reply brief, page 2) and the references, the claimed method encompassed by claim 1 “comprises”1
at least the sequence (ZQ) at some point in the method of treating chemical paper pulp followed at some
later point in the process by a washing step and then at a futher latter point b a P stage, that is, at least
(ZQ)P. See In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981) (“As long
as one of the monomers in the reaction is propylene, any other monomer may be present, because the
term ‘comprises’ permits the inclusion of other steps, elements, or materials.”); cf. Exxon Chemical
Patents Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555, 35 USPQ2d 1801, 1802 (Fed. Cir. 1995) (“The
claimed composition is defined as comprising - meaning containing at least - five specific ingredients.”).
Claim 23 differs from claim 1 in that the pH adjustments and the specific
See, e.g., Backlund, e.g., col. 2, lines 7, 9 and 24; Lindberg, e.g., col. 2, lines 28-33. I note that the
“E stage” in Lindberg, col. 2, line 33, is disclosed in Lundgren, col. 2, lines 56-57, as “E = alkali
extraction stage,” and that the “T stage” in Lindberg is the “chelating stage” (col. 3, line 60, and col. 4,
line 31) which is represented by “Q” in the other references. Appellants use parenthesis, as in “(ZQ),”
to indicate the absence of a wash step between the enclosed stages.
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