Appeal No. 95-2835
Application 08/127,659
a catalyst “comprising” at least rhodium carried on a support and a secondary C3-C10 alcohol in the
hydrogenation process and appellant does disclose that the catalyst can contain ‘[o]ther metals
optionally carried on the same or a separate support” and that other solvents can be present
(specification, pages 3-4). Exxon Chemical Patents 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.”). We find that appealed claims 1 and 7-9 do not contain any limitations on the amount of
the supported rhodium hydrogenation catalyst or any other hydrogenation catalyst or on the secondary
alcohol or any other solvent which must or may be present.6 Indeed, while appellant discloses that it is
the rhodium catalyst system and the secondary alcohols that provide respective advantages to the
claimed process (specification, e.g., page 2, lines 5-9), the term “comprises” would permit the inclusion
of other metals in the rhodium catalyst system as well as additional catalysts and other solvents in
amounts which would adversely affect the basic and novel characteristics of the claimed composition.
Compare In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976); In re
Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893, 896 (CCPA 1963); Ex parte Davis, 80
USPQ 448, 450 (Bd. App. 1948).
Whitman teaches the catalytic hydrogenation of, inter alia, meta-toluenediamines (e.g., col. 6,
lines 66-67) with a supported hydrogenation catalyst, which can contain rhodium separately or mixed
with other metals and can be used with other supported hydrogenation catalysts, in the presence of a
solvent, which can be isopropanol and can be mixed with other solvents (col. 7, lines 7-40), wherein the
hydrogenation is conducted in the presence of at least one salt of a transition or lanthanide metal as a
5 See 37 CFR § 1.75(e)(1982); MPEP § 608.01(m)(7th ed., July 1998; 600-64).
6 We will not read into the appealed claims any limitations on the amounts of secondary alcohols or
other solvents or the amounts of any hydrogenation catalysts which can be used in the hydrogenation
processes as disclosed in the specification (pages 3-4) as such limitations are not expressly set forth in
the claims. In re Priest, 582 F.2d 33, 38, 199 USPQ 11, 15 (CCPA 1978), citing In re Prater, 415
F.2d 1393, 1405, 162 USPQ 541, 551 (CCPA 1969).
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