Appeal No. 2002-0181
Application No. 08/476,497
Here, the examiner appears to acknowledge that the
specification indicates to one skilled in the relevant art that
the term “silicon fibers” is not intended to encompass fibers of
elemental silicon but rather fibers of silicon compounds.
Accordingly, we cannot uphold the rejection of appealed claim 19
on this ground.
With respect to claims 21 and 22, the examiner states: “It
is not clear if the closed ‘consisting of’ and ‘consisting
essentially of’ or the open ‘comprising’ terminology controls
the scope of the components in the composite material of the
claims.” (Answer, unnumbered page 3.)
We disagree. It is clear from the text of claims 21 and 22
that the composite material consists essentially of (claim 21)
or consists of (claim 22) the recited components. On the other
hand, the term “comprising” only modifies the amount of the
reinforcing fibers present in the composite material. On this
point, we further note that the composite material contains
materials other than the reinforcing fibers. Thus, the use of
the term “comprising” to define the amount of the reinforcing
fibers is not inconsistent with the use of the transitional
phrases “consisting essentially of” or “consisting of.” Cf.
Mannesmann Demag Corp. v. Engineered Metal Products Co., Inc.,
793 F.2d 1279, 1282, 230 USPQ 45, 46 (Fed. Cir. 1986).
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