Appeal No. 2006-1352
Application 10/250,683
component” is in operation. Therefore, a heat dissipating member would be encompassed by the
claims if it exhibits the specified properties in the presence of any “electronic component” which
in operation provides “a temperature higher than room temperature” at which point the heat
dissipating member would exhibit the specific characteristics.3
The language of claim 1 further specifies that the heat dissipating member is “formed”
from a composition comprising at least any amount of any manner of silicone resin and any
amount of any manner of heat conductive filler, “wherein the heat conductive filler is a mixture
of a filler having an average particle size of 0.1 to 5 µm and a filler having an average particle
size of 5 to 25 µm,” to the extent that the composition provides the member with the properties
specified in the claim as we found above. We find no basis in the language of claim 1 or in the
written description in the specification (see, e.g., page 4, l. 36, to page 5, l. 9) on which to read
any other limitation(s) on the composition and thus, the heat dissipating member, into the claim.
Indeed, the specification discloses that the composition can contain, for example, silicone resins
that are curable by any manner of reaction, heat conductive filler that can be surface treated,
other silicone materials, such as silicone oils and gums, and other additive, such as silicone
resins imparting flexibility and tack to attach the heat dissipating member to the components,
and catalysts which facilitate the curing reactions, such as platinum catalysts (e.g., pages 6-8 and
9-10). The claim is open to compositions containing such additional ingredients by the use of
the open-ended term “comprising.” 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 limitation on the average
particle size distribution of the heat conductive fillers is satisfied by a single filler, having one or
several shapes and/or otherwise provides a bimodal distribution of particles sizes falling within
3 To the extent that the cited claim language is intended by appellants as a “method or process of
use” limitation, such a limitation has no place in a product claim. See In re Wiggins, 397 F.2d
356, 359 n.4, 158 USPQ 199, 201-02 n.4 (CCPA 1968).
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