Ex parte EICKEN et al. - Page 4

              Appeal No. 1997-3589                                                                                            
              Application No. 08/117,013                                                                                      

              a lubricant component, the examiner has failed to establish that the references anticipate or form a prima      

              facie case of obviousness for the subject matter defined by the appealed claims.                                

              Claim Construction                                                                                              

                      Appellants' claimed invention relates to a spinning finish composition which contains a lubricant       

              component having improved biodegradability.  See, e.g., claim 11.  Appellants' claimed invention also           

              relates to a process for lubricating a synthetic filament fiber comprising contacting the filament fiber with   

              a spinning finish composition containing the same lubricant component as recited in claim 11.  See, e.g.,       

              claim 19.                                                                                                       

                      Spin Finish Composition                                                                                 

                      To properly determine the patentability of the claims, one must first analyze and construe the          

              claims.  In the present application, appellants' spin finish composition “contains” a  lubricant component.     

              The use of the transitional word “contains” renders the spin finish composition open to the presence of         

              additional, unrecited elements.  Moleculon Research Corp. v. CBS, Inc. 793 F.2d 1261, 229 USPQ                  

              805 (Fed. Cir. 1986); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948).  Accordingly,                           

              compositions having the recited lubricant and an additional component are within the scope of the               

              presently claimed spin finish compositions.                                                                     

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