Appeal No. 2001-0074
Application 09/039,829
As no separate argument is provided for any dependent claim, all claims stand or
fall with claim 1 for purposes of this rejection. See 37 CFR §1.192(c)(7)(1999).
Analysis
This set of facts requires us to determine two issues: 1) the scope of the claims,
and 2) the sufficiency of the disclosure in supporting those claims. To do this, we must
wear two different hats. The scope of the claim language is an issue of law, to be
decided according to the appropriate tenets of claim construction which are well-known
to patent practitioners. See Markman v. Westview Instruments, Inc., 52 F.3d 967, 34
USPQ2d 1321 (Fed. Cir. 1995) (en banc). However, the issue of the sufficiency of the
written description is an issue of fact, to be analyzed according to the knowledge of that
yet again elusive hypothetical person of ordinary skill in the art. Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116 (Fed. Cir. 1991). We address
the issue of claim construction first.
The issue of whether “including” is open-ended, like “comprising,” or means
something else, like “consisting essentially of” or “consisting”, is a matter evaluated on a
case-by-case basis. Cf. the discussion under OTHER TRANSITIONAL PHRASES in §
2111.03 of the Manual of Patent Examining Procedure (discussing prior court
interpretations of “having” and “composed of”). See also Crystal Semiconductor Corp.
v. Tritech Microelectronics International, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001)
(“having” does not create a presumption that the body of the claim is open; rather the
claim must be examined in its full context to determine whether “having” limits the
claims to its recited elements); AFG Industries, Inc. v. Cardinal IG Co., Inc., 239 F.3d
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