Appeal No. 1999-1082 Page 6
Application No. 08/813,359
the reference teaches placing an adhesive in the vents on the bottom surface of the base,
which would be pressed into contact with the roof when the snow guard is installed (column
4, lines 53-57). In this regard, the claim is couched in terms of a “comprising” format,
which leaves it open to the inclusion of additional steps, such as the interengaging
2
attachment feature disclosed in the reference. Kwiatkowski therefore also establishes a
prima facie case of obviousness with regard to the method of claim 17.
We thus will sustain the rejection of independent claims 1 and 17, as well as the
rejection of dependent claims 6 and 9-15, the patentability of which have not been
separately argued before the Board.3
While we carefully considered all of the arguments presented by the appellant in the
Briefs, they did not persuade us that this rejection should not be sustained. With regard to
the appellant’s argument that the Kwiatkowski snow guard is held in place by engagement
with upwardly protruding elements on the surface of the roof, whereas the appellant’s is
non-invasive, we observe that on page 10 of the appellant’s specification the invention is
described as including countersunk holes so that the snow guard can be secured to the
roof by invasive means such as fasteners. Moreover, there are no limitations in claims 1 or
2It is well settled the use of the term "comprising" in a claim opens the claim
to inclusion of elements or steps other than those recited in the claim. See, for example, In
re Hunter, 288 F.2d 930, 932, 129 USPQ 225, 226 (CCPA 1961
3 In re Nielson, 816 F.2d 1567, 2 USPQ2d 1525 (Fed. Cir. 1987).
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007