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.
Page 4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007