Appeal No. 2000-1162
Application 08/967,876
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the examiner’s answer and to appellants’ brief2 and reply brief for a complete
exposition thereof.
Opinion
In order to compare the claimed invention encompassed by appealed claims 5 and 8 with
the applied prior art, we must first interpret the terms of this claim in light of the written
description in the specification as interpreted by one of ordinary skill in this art. See, e.g., In re
Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000); In re Morris, 127 F.3d
1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997), In re Zletz, 893 F.2d 319, 321-22, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989). We find that the plain language of appealed claims 5 and
8 requires that the ethylene-propylene-diene-monomer (EPDM) composition comprising at least
an ethylene-propylene-diene-monomer (EPDM) and a carbon black characterized with respect to
cetyl-trimethyl ammonium bromide absorption values (CTAB) and dibutyl phthalate adsorption
values (DBP) as specified in the claims, wherein the carbon black and the EPDM are present in
the amounts specified in the claims, and the composition has a smooth high gloss finish when
extruded. We determine that the transitional term “comprising” opens the claimed composition
to include other ingredients in addition to the two specified ingredients, and appellants disclose
that other ingredients can be present (specification, page 3). 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
requirement in the preamble of each claim that the composition has a smooth high gloss finish
when extruded limits the claimed compositions to those ingredients in such amounts which do
not preclude the composition from exhibiting this property as at least visually determined
(specification, e.g., page 7). See generally, Corning Glass Works v. Sumitomo Elect. U.S.A., Inc.,
2 We have considered the appeal brief filed August 24, 1999 (Paper No. 37).
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