Appeal No. 1996-2857
Application 08/191,735
sustain the grounds of rejection under 35 U.S.C § 103: claims 5 through 11 and 15 are unpatentable
over Markhoff-Matheny ‘461 taken with Cottringer ‘364 (answer, pages 3-5 and 7-9); claims 5
through 11 and 15 are unpatentable over Bergna ‘017 taken with Cottringer ‘364 (answer, pages 5-6
and 9-10); and claims 12 and 13 are unpatentable over Bergna ‘017 taken with Cottringer ‘364, or
Markhoff-Matheny ‘461 taken with Cottringer ‘364, as applied to claims 5 through 11 and 15, and
further in view of Okajima ‘015 (answer, pages 6-7).3
We have construed claim 15, mindful that we must give the broadest reasonable interpretation
to the terms of the appealed claims consistent with appellant’s specification as it would be interpreted
by one of ordinary skill in this art. In re Morris, 127 F.3d 1048, 1054-56, 44 USPQ2d 1023, 1027-
29 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
We find from the plain language of claim 1, as it would be interpreted by one of ordinary skill in this art
in light of appellants’ specification, that this claim encompasses processes for the production of alpha
alumina particles having a silica coating which have particle widths of from about 20 to about 50
nanometers and a BET surface area of at least 50 m /gm, which comprise at least the three steps2
specified in this claim, including the step of forming a gel containing boehmite particles with a particle
size less than about 100 nanometers in which is dispersed silica per se in an amount that is from about
0.5 to about 5% by weight of the solids content of the gel. See generally, 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.”).
We further find that in view of the transitional term “comprising” in the preamble of claim 15, that the gel
of boehmite particles can further contain seed material, such as in the manner shown by Cottringer
‘364. 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 are not persuaded to
3The references relied on by the examiner with respect to the grounds of rejection are listed at page 2
of the answer. We refer to these references in our opinion by the name associated therewith by the
examiner.
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