Appeal No. 2001-1986
Application No. 08/719,968
due to the use of the transitional term “comprising.” Genentech, Inc. v. Chiron Corp., 112 F.3d 495,
500, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim language
which means that the named elements are essential, but other elements may be added and still form
a construct within the scope of the claim”) (citation omitted). Thus, the critical element is the
urethane prepolymer, Scheve’s component (2). Scheve teaches urethane prepolymers having the
structure:
X-(DICN)-[(O-D-O)-(DICN)]m-[(D’-O)-(DICN)]n-X,
where X corresponds to Appellant’s Y1, DICN is a diisocyanate moiety, and “D and D’ are
polymeric backbones selected from hydroxy terminated homopolymers of butadiene . . . ethylene
. . .” (Scheve at col. 2, l. 50, through col. 3, l. 13.)
The examiner found that the secondary references, which all relate to methods of making
printing plates using photoreactive polymeric compositions, motivate using hydrogenated
prepolymeric components in Scheve. (Answer at 4.) I concur, at least with respect to Chen and
Hoffmann. I find that Scheve and the secondary references relate to analogous art: all concern
making printing plates with photopolymerizable polymeric compositions. Moreover, each seeks
similar properties in the produced printing plate: flexibility, abrasion resistance, resilience, solvent
resistance (Scheve at col. 7, ll. 36–41); Chen at col. 3, ll. 11–27 (high tensile strength, elasticity,
solvent resistance); Hoffman at col. 1, ll. 14–15 (high tensile strength). Thus, Scheve, Chen, and
Hoffmann pass both prongs of the test for analogous art set out in In re Clay, 966 F.2d 656, 658–59,
23 USPQ2d 1058, 1060 (Fed. Cir. 1992) (“Two criteria have evolved for determining whether prior
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