Appeal 2007-2233
Application 10/228,754
the successive steps of coating the interior of a substrate through a partially
immersed end thereof, rotating the substrate 180°, and then applying a blast
of air to the end of the substrate that had been submerged. See, e.g., In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830
(Fed. Cir. 2004); In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667
(Fed. Cir. 2000); 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). We point
out that while the transitional term “comprising” opens the claim to
encompass methods which contain other steps and ingredients in addition to
those specified in the claim as interpreted in light of the written description
in the Specification, it does not modify specifically required steps and
ingredients. See, e.g., Vehicular Technologies Corp. v. Titan Wheel Int’l
Inc., 212 F.3d 1377, 1383, 54 USPQ2d 1841, 1845 (Fed. Cir. 2000);
Genentech Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613
(Fed. Cir. 1997); In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 802
(CCPA 1981).
We agree with the Examiner’s finding of fact from Rosynsky and
Watanabe and determination of a method reasonably suggested to one of
ordinary skill in the art by this combination of references. However, the
Examiner has not established a prima facie case of obviousness because the
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