Appeal No. 1998-1573
Application 08/599,840
As an initial matter, we must interpret claim 1, giving the terms thereof the broadest reasonable
interpretation in light of the specification as it would be interpreted by one of ordinary skill in this art.
See generally, In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997).
We interpret claim 1 to be a “Jepson” type claim which is an implied admission by appellant that
processes of coating a metal article with an alkyl-substituted polyphenylene oxide as set forth in the
preamble of this claim were known. We find no disclosure in appellant’s specification which indicates
that such a process, other than the modification thereof with respect to heat treating the alkyl-substituted
polyphenylene oxide coated metal article in air to enhance the corrosion protection of this coated metal
article as claimed, is appellant’s own work. See generally, Pentec, Inc. v. Graphic Controls Corp.,
776 F.2d 309, 315, 227 USPQ 766, 770 (Fed. Cir. 1985); In re Fout, 675 F.2d 297, 299-301, 213
USPQ 532, 535-36 (CCPA 1982); In re Ehrreich, 590 F.2d 902, 909-10, 200 USPQ 504, 510
(CCPA 1979). The transitional term “comprising” opens the improvement to any additional steps and
materials. See, e.g., In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981).
We further interpret the language “heat treating of the [alkyl-substituted polyphenylene oxide]-
coated metal article in air to enhance the corrosion protection provided by the [alkyl-substituted
polyphenylene oxide] to the metal surface in the [alkyl-substituted polyphenylene oxide ]-coated metal
article” in light of the specification to require heating the alkyl-substituted polyphenylene oxide-coated
metal article in air at any temperature and any period of time necessary to obtain at least a measurable
improvement in “the corrosion resistance of the coated article as compared to an analogous coated
metal article that has not been heat treated” (specification, page 4). We find no basis in the record on
which a specific limitation with respect to the time and/or temperature of the “heating” step can be read
into claim 1 (see specification, sentence bridging pages 4-5). In re Priest, 582 F.2d 33, 37, 199
USPQ 11, 15 (CCPA 1978), citing In re Prater, 415 F.2d 1393, 1405, 162 USPQ 541, 551
(CCPA 1969) (“We have consistently held that no ‘applicant should have limitations of the specification
read into a claim where no express statement of the limitation is included in the claim.’”).
The known processes of coating metal articles with alkyl-substituted polyphenylene oxide,
including poly(2,6-dimethyl-1,4-phenylene oxide), are acknowledged in appellant’s specification to
include processes in which additional materials can be included with alkyl-substituted polyphenylene
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