Appeal No. 2003-1162 Page 16
Application No. 09/468,292
The Examiner has the initial burden of presenting evidence of reasons why persons
skilled in the art would not recognize in the disclosure a description of the invention defined by
the claims. In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976). The Examiner
here has attempted to meet that burden by pointing out that the claims might encompass more
than what is disclosed in the specification. In this case, this potential difference is not enough to
meet the Examiner’s burden.
First, as a matter of claim interpretation, the claims require the presence of at least one of
the enumerated substituents in the ionic liquid. The transitional phrase “comprises” merely
allows for the inclusion of other ionic liquids in addition thereto. In the context of claims 46-52
and 54-57 which use “comprises” to introduce a list of alternative substituents for Y- and R
groups on a generic formula, each list requires the presence of one of the recited members,
although additional ionic liquids may be included. This interpretation is consistent with the
holding of our reviewing court that “‘[c]omprising’ is a term of art used in claim language which
means that the named elements are essential, but other elements may be added and still form a
construct within the scope of the claim.” Genentech Inc. v. Chiron Corp., 112 F.3d 495, 501, 42
USPQ2d 1608, 1613 (Fed. Cir. 1997)(emphasis added); see also Kustom Signals Inc. v. Applied
Concepts Inc., 264 F.3d 1326, 1332, 60 USPQ2d 1135, 1139 (Fed. Cir. 2001)(“The open-ended
transition ‘comprising’ does not free the claim from its own limitations.”); Moleculon Research
Corp. v. CBS, Inc., 793 F.2d 1261, 1271, 229 USPQ 805, 812 (Fed. Cir. 1986)(“comprising”
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