Appeal No. 2002-2080
Application 09/358,484
We determine that the transitional term “comprising” in these appealed claims would
serve its customary purpose in claim construction of opening appealed claim 21 to encompass
methods which include any additional steps, such as the step of oxidizing the surface of an
aluminum nitride containing layer or the step of applying or forming a layer to the surface of the
aluminum nitride containing layer, as disclosed in the specification and as embodied in cancelled
claims 26 and 33. See 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.”).
Upon applying appealed claim 21, 24, 32, 34 and 35, as we have interpreted the claim
language appearing therein above, with the combined teachings of Kondo and Toyoda, we agree
with the examiner (answer, pages 3-4) that, prima facie, one of ordinary skill in this art routinely
following the combined teachings of these references would have formed a dense smooth glass
layer on a sintered aluminum nitride article by applying and sintering one or more layers of paste
oxide glass on a surface of that article in the manner disclosed by Kondo and Toyoda, in the
reasonable expectation of achieving the surface characteristics of the glass layers specified in the
references for an aluminum nitride ceramic useful for the applications taught in the references,
and thus would have arrived at a process encompassed by appealed claims 21, 24, and 34 without
recourse to appellants’ specification. See, e.g., Pro-Mold & Tool Co. v. Great lakes Plastics Inc.,
75 F.3d 1568, 1573, 37 USPQ 1626, 1629-30 (Fed. Cir. 1996); In re Gorman, 933 F.2d 982,
986-87, 18 USPQ2d 1885, 1888-89 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981).
Accordingly, since a prima facie case of obviousness with respect to appealed claims 21,
24 and 34 has been established by the examiner over the combined teachings of Kondo and
Toyoda, we have again evaluated all of the evidence of obviousness and nonobviousness based
on the record as a whole, giving due consideration to the weight of appellants’ arguments in the
brief and reply brief. See generally, In re Johnson, 747 F.2d 1456, 1460, 223 USPQ 1260, 1263
(Fed. Cir. 1984); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
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