Appeal No. 2000-2039
Application 09/176,608
the claim. According to the examiner, such modification would
merely be an optimum desired result of routine experimentation.
The examiner is also of the view (see pages 5 and 6 in the
answer) that since claim 1 is written in an open-ended
“comprising” format,1 it does not exclude the diagonal cut lines
from having more than one uncut portion.
The appellants do not dispute that Gorton would have
suggested providing the admitted prior art blank with diagonal
cut lines of perforations to prevent the ensuing box from opening
prematurely, or that Gorton would have suggested uncut portions
in the range of .020 to .065 inches. The appellants do contend,
however, that claim 1 is limited to a box blank having only one
uncut portion in each diagonal cut line (see pages 1 and 2 in the
reply brief). In this light, the appellants argue that Gorton
fails to disclose or suggest the claimed invention because
[w]hile Gorton may accomplish similar results when
compared to the present invention, the manner in which
those results are accomplished is entirely different.
Instead of a single uncut portion, Gorton utilizes
perforated lines 36, 36a, each of which includes a
significant plurality of uncut portions. Line 36
extends from the front of the recloseable [sic,
reclosable] box to the rear of the box, and as such
line 36 includes at least 8 or 9 uncut portions. The
1 The transitional term “comprising” leaves a claim open for
the inclusion of unspecified elements. See Ex parte Davis, 80
USPQ 448 (Bd. App. 1948).
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