Appeal No. 2000-1832
Application 08/868,736
USPQ2d 1664, 1667 (Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997), In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989). On this record, we determine that the “an addition-polymer powder” prepared by the
processes of appealed claims 32 and 33 and encompassed by appealed claim 59, is a product
separate and apart from “a binding mineral building material.” See generally, In re Fritch, 972
F.2d 1260, 1262, 23 USPQ2d 1780, 1781 (Fed. Cir. 1992) (citing Perkin-Elmer Corp. v.
Computervision Corp., 732 F.2d 888, 896, 221 USPQ 669, 675 (Fed. Cir.), cert. denied, 469 U.S.
857 [225 USPQ 792] (1984), Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d
1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989), In re Stencel, 828 F.2d 751, 754-55, 4
USPQ2d 1071, 1073 (Fed. Cir. 1987). Each of appealed claims 32 and 33 plainly specify in the
preamble thereof “[a] process for preparing an addition-polymer powder” which is “suitable for
modifying a binding mineral building product,” and further specify in the body thereof the step of
drying an aqueous dispersion of the addition-polymer and one assistant to obtain a dried
intermediate powder product, followed immediately by the step of adding a second assistant to
the intermediate powder product in order to form the final addition-polymer powder product.
Thus, it is clear from the preamble and the body of these claims that the claimed processes
comprise at least the two steps of forming an addition-polymer powder that contains the two
specified assistants. Indeed, we find that one of ordinary skill in this art would find it clear from
the written description in the specification that “an addition-polymer powder” is a separate
product which, after formulation, is used for “modifying a binding mineral building materials,
and particularly since it is apparent from each of Penzel (e.g., col. 1, lines 31-36; col. 3, lines 32-
38; col. 12, lines 7-47; and col. 13, lines 4-6), Schulze (e.g., col. 1, lines 37-38; col. 2, lines 5-19;
col. 3, lines 5-14 and 21-38; Examples 1-3 and col. 6, lines 15-17) and Pak-Harvey (e.g., col. 1,
lines 29-50; col. 2, lines 3-23; col. 3, lines 36-48; Examples 1 and 3, and col. 5, lines 17-19), that
this person would have the knowledge that a redispersible addition-polymer powder is separately
prepared before the addition thereof to such materials.
We further determine that the transitional term “comprising” opens the claimed methods
encompassed by appealed claims 32 and 33 to include additional steps that add other ingredients
to the specified addition-polymer powder product after its preparation, which could include the
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