Appeal No. 2006-0548
Application 10/381,877
(Fed. Cir. 2004); 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).
The plain language of independent claim 1 specifies a plastic sheeting comprising at least
one layer of 1) polyamide; 2) mixtures of pure polyamides; 3) mixtures of a polyamide and one
or more different polymers; or 4) mixtures of several polyamides and one or more different
polymers, wherein the “different polymers” are any kind of polymer other than a polyamide.
The transitional term “comprises” opens the claim to include plastic sheeting that includes other
materials and layers, including additional layers of any polymers. See generally, Exxon Chem.
Pats., 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.”); 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.”).
The preambular language of claim 1 specifies that the plastic sheeting must at least be
capable of being used for mulching plants and can have barrier properties, but otherwise adds no
limitation to the claimed sheeting. See In re Stencel, 828 F.2d 751, 754-55, 4 USPQ2d 1071,
1073 (Fed. Cir. 1987), and cases cited therein (“Whether a [statement] . . . of intended purpose
constitutes a limitation to the claims is, as has long been established, a matter to be determined
on the facts of each case in view of the claimed invention as a whole.”). To the extent that the
cited language of appealed product claim 1 is intended by appellants as a method or process of
use limitation of the claimed sheeting, such a limitation has no place in a product claim. Cf. In
re Wiggins, 397 F.2d 356, 359 n.4, 158 USPQ 199, 201-02 n.4 (CCPA 1968), and cases cited
therein (“[A]ppellant’s discovery of the analgesic properties of ‘O2’ and of a composition
containing it could properly be claimed only as a method or process of using that compound or
composition in accordance with the provisions of 35 U.S.C. 100(b) and 101.”).
Appealed dependent claims 2, 3, 5, 6 and 8 further limit multi-layer sheeting
encompassed by claim 1 by specifying that one outer layer (claims 2, 5, 6 and 8) or the two outer
layers (claim 3) must consist of one of the polyamide containing layers as specified in claim 1.
3 We consider the brief filed May 9, 2005.
- 3 -
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007