Appeal No. 2000-0994
Application 09/097,123
claim 1 requires that the composition claimed therein comprises at least “50 to 80 parts by
weight” of a phenyl-methyl siloxane having the average general formula and viscosity specified
in the claim, and 20 to 50 parts of a polytetrafluoroethylene powdered solid, the two specified
components being present in the specified amounts “per 100 parts by weight of the combined
weights of (A) and (B).” We determine that the transitional term “comprising” opens the
claimed compositions to compositions which contain other ingredients in addition to the two
specified ingredients. 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.”). However, the term “dielectric lubricant” in the preamble of
claim 1 limits the claimed compositions to those ingredients in such amounts which do not
preclude the composition from exhibiting dielectric properties. See generally, Corning Glass
Works v. Sumitomo Elect. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir.
1989); In re Stencel, 828 F.2d 751, 754-55, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987).
We have carefully reviewed the record on this appeal and based thereon find ourselves in
agreement with the supported position advanced by the examiner (answer, pages 3-5) that, prima
facie, one of ordinary skill in this art routinely following the teachings of each of Lontz and
Wright would have combined a phenyl-methyl siloxane having the average general formula and
viscosity specified in appealed claim 1 and a polytetrafluoroethylene powdered solid specified in
appealed claim 1 in amounts falling within the range specified in this claim, in the reasonable
expectation of obtaining a composition falling within the teaching of the reference. See
generally, Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1845-
46 (Fed. Cir. 1989) (“That the ‘813 patent discloses a multitude of effective combinations does
not render any particular formulation less obvious.”); In re Lemin, 332 F.2d 839, 841, 141 USPQ
814, 815-16 (CCPA 1964) (“Generally speaking there is nothing unobvious in choosing ‘some’
among ‘many’ indiscriminately.”). Indeed, appealed claim 1, as we have interpreted this claim
above, encompasses compositions that contain finely divided zinc oxide in the amount shown by
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