Appeal No. 2002-0322
Application 08/681,870
In appealed claim 9, the cover “comprises” at least a composition “including” an ethylene
copolymer “including up to” about 30% by weight of an alkyl acrylate wherein the alkyl group of
the acrylate ester group is selected from the group consisting of methyl, ethyl and butyl, with the
ethylene copolymer “comprising” at least 10 to 100 parts by weight of the composition. The
cover per se is further specified as “further including” some amount, no matter how small, of
“a metal salt of a member selected from the group consisting of zinc, potassium, lithium,
calcium, sodium, nickel, magnesium, and manganese.” There is no requirement in appealed
claim 9 that the acrylic acid units of the ethylene copolymer are neutralized to any extent.
Indeed, only the mere presence of the specified metal salt per se in some manner in the cover per
se is required, and there is no provision in appealed claim 9 for any interaction of such salt with
any component of the specified composition, including the specified ethylene copolymer. See
Exxon Chemical Patents Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555-58, 1558, 35 USPQ2d
1802-05, 1804 (Fed. Cir. 1995) (“The specification as a whole, and the claims in particular,
contain no temporal limitation to the term ‘composition.’ . . . The composition of claim 1, once
its ingredients are mixed, is a composition existing during manufacture that is being used to
produce the end product. Consequently, as properly interpreted, Exxon’s claims are to a
composition that contains the specified ingredients at any time from the moment at which the
ingredients are mixed together. This interpretation of Exxon’s claims preserves their identify as
product claims, and recognizes as a matter of chemistry that the composition exists from the
moment created.”).
The claimed cover composition encompassed by each of appealed claims 1, 9 and 10 can
contain any manner of additional components because of the open-ended term “comprising,”
which is used as a transitional term in each of the claims, see Exxon Chem. Pats., 64 F.3d at
1555, 35 USPQ2d at 1802 (“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.”), and the term “including” that has long been held to be an open-
ended term synonymous with the open-ended term “comprising.” See generally, In re Bertsch,
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