Appeal No. 1998-2001
Application No. 08/408,688
magnets, and in the final three lines of method claim 48 that
the method "does not include any further step of providing
additional magnets to said magnetic fluid treatment
apparatus." It is axiomatic that whereas the transitional
term "comprising" is open-ended and does not exclude
additional subject matter, the transitional term "consisting
of" does exclude any element, step, or ingredient not
specified in the claim, and thus closes the claim to the
inclusion of additional subject matter. See Manual of Patent
Examining Procedure § 2111.03. This being the case, Curtis,
on its face, does not meet the terms of the appellant’s
claims, a factor which the examiner apparently recognizes.
It is the examiner’s view, however, that it would have
been obvious to one of ordinary skill in the art to omit one
of the Curtis magnets "in order to reduce the cost and
complexity of the device in cases where a magnetic field
having a smaller area of coverage was required" (Paper No. 15,
page 3). We do not agree. From our perspective, one of
ordinary skill in the art would have been taught by Curtis
that omission of a magnet is not an option because the patent
states unequivocally that the invention must
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