Appeal No. 2006-0235
Application 09/733,352
screening force on fiber 8. The transitional term “comprising” opens claim 1 to include methods
that at least have the limitations specified in the claim and any additional step(s) and
component(s). See, e.g., Vehicular Technologies Corp. v. Titan Wheel Int’l Inc., 212 F.3d 1377,
1383, 54 USPQ2d 1841, 1845 (Fed. Cir. 2000); 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.”).
We find that appealed claims 16 and 17 as they stand of record are each dependent on
canceled original claim 155,6 and thus are indefinite, raising issues under 35 U.S.C. § 112, second
paragraph. However, in order to resolve prior art issues in this appeal, thus avoiding piecemeal
prosecution, we determine that a reasonable, conditional interpretation of the language of each of
these claims is that they both are dependent on appealed claim 14 on which original claim 15
was dependent, with appealed claim 1 providing antecedent basis for the load cell. We find that
appealed claims 33 through 35 encompass substantially the same apparatus limitations.
Accordingly, we consider the application of prior art under § 103(a) to appealed claims 16 and
17 on this basis.7 Cf. In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962);
Ex parte Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. & Int. 1993).
We find that Knowles, the principal reference, would have disclosed to one of ordinary
skill in the art a method for pulling and strength testing an optical fiber using an apparatus which
applies tensile stress to an optical fiber 18 formed by a fiber draw, that is, pulling fiber 18 from
5 See above note 1.
6 Contrary to the examiner’s finding (answer, page 3), the copy of the appealed claims in the
appendix to the brief contains error as each of claims 16 and 17 as set forth therein reads in
pertinent part “method of claim, wherein” (page 12).
7 Our conditional interpretation does not save the claims from their condition. We decline to
exercise our authority under 37 CFR § 41.50(b) (September 2004) and enter on the record a new
ground of rejection of the appealed claims 16 and 17 under § 112, second paragraph, with
respect to these issues, leaving it to the examiner to address the same upon any further
consideration of the appealed claims before the examiner. At the same time, the examiner
should consider the following: whether claims 24 and 26, both dependent on claim 20, and
claims 27 and 28 constitute substantial duplicates (see Manual of Patent Examining Procedure §
706.03(K) Duplicate Claims (8th ed., Rev. 3, August 2005)); and whether claims 5, 7 through 9
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