Appeal No. 1997-3096
Application 08/391,407
893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). Whether a statement of purpose
or intended use in the preamble of a claim and/or in the body of the claim constitutes a limitation
or limitations that are necessary to give meaning to the claim and properly define the invention is
“determined on the facts of each case in view of the claimed invention as a whole.” In re
Stencel, 828 F.2d 751, 754-55, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987); see also Paulsen, 30 F.3d
at 1478-79, 31 USPQ2d at 1673-74; Corning Glass Works v. Sumitomo Elect. U.S.A., Inc., 868
F.2d 1251, 1256-57, 9 USPQ2d 1962, 1965-66 (Fed. Cir. 1989). The transitional term
“comprising” in the preamble and the further presence of this open-ended term in the body of the
claim opens the claim to the inclusion of additional ingredients and other elements. See 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.”); 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.”).
The claimed article comprises at least “a flat and flexible material” (claim 16) or “a sheet
of material” (claims 31 and 32) which must act as a “deflector” “to reduce the intrusion of water
and sound” (claim 16) or “to reduce the intrusion of water and attenuate sound” (claims 31 and
32) either “past” an “inner panel of a vehicle” (claim 16) or “through an opening (claims 31 and
32), wherein the material or sheet of material has “a peripheral shape generally matching the
peripheral configuration of the inner panel,” and in doing so would cover an “opening” (claim 16
and claims 31 and 32). The ingredients making up the material or sheet comprise at least “a
thermoplastic elastomer substantially filled with an inorganic filler” (claims 16 and 31), or a
“thermoplastic elastomer” that “further comprises” at least “from about 2% to about 20% of
polyethylene selected from the group consisting of low density polyethylene, linear low density
polyethylene, ultra low density polyethylene” and “said inorganic filler further comprises a
thermoplastic elastomer substantially filled with from about 50% to about 95% of an inorganic
filler” in claim 32 which we read for purposes of this appeal as “said thermoplastic elastomer is
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