Appeal No. 1997-0006
Application 08/409,946
The references relied on by the examiner are:
Tamura et al. (Tamura) 4,443,528 Apr. 17, 1984
Kobata et al. (Kobata) 5,204,200 Apr. 20, 1993
The examiner has rejected appealed claims 1 through 11 and 14 through 19 under 35
U.S.C. § 103 as being unpatentable over Tamura view of Kobata. We affirm.
Rather than reiterate the respective positions advanced by the examiner and appellants, we
refer to the examiner’s answer and to appellants’ principal and reply briefs for a complete exposition
thereof.
Opinion
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the examiner that the claimed electrophotographic recording material encompassed by
appealed claim 1 would have been obvious over the combined teachings of Tamura and Kobata to one
of ordinary skill in this art at the time the claimed invention was made.
As an initial matter, we must determine the invention encompassed by appealed claim 1 as it
stands before us, mindful that we must give the broadest reasonable interpretation to the terms of the
appealed claim consistent with appellants’ specification as it would be interpreted by one of ordinary
skill in this art. See In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir.
1997). The use of the transitional term “comprising” opens the claimed electrophotographic recording
material to the inclusion of any additional materials and layers in any amount. 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 [emphasis supplied].”); 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 further find that the term “containing” used in the definition of the “photosensitive recording layer”
has the same effect as the transitional term “comprising.” Exxon, supra; In re Panagrossi, 277 F.2d
181, 185, 125 USPQ 410, 413 (CCPA 1960). This transitional term opens the “photosensitive
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