Appeal No. 2003-0819
Application No. 09/872,928
stabilizers], which are not within the ambit of the present
claims, from the polymer compositions is unsuggested [sic]” in
Ertl. (Appeal brief, page 6.) This argument lacks merit. As
pointed out by the examiner (answer, pages 4-5), the term
“comprising” in appealed claim 14 opens the claimed composition
to unrecited components. It is by now axiomatic that the term
“comprising” in a claim not only alerts potential infringers
that the recited components are essential, but that other
unrecited components may be present and still form a construct
within the scope of the claim. See, e.g., In re Baxter, 656
F.2d 679, 686, 210 USPQ 795, 802 (CCPA 1981).
The appellants contend that the phrase “a solution of the
[HALS] compounds” at column 7, line 62 of Ertl is
incomprehensible to one of ordinary skill in the art. (Appeal
brief, page 6.) The appellants, however, have not provided any
evidentiary basis to doubt the accuracy of Ertl’s disclosure.
Regardless, appealed claim 14 or 25 fails to exclude “a solution
of the [HALS] compounds.”
The appellants urge that “the instant invention is [] a
selection invention with regard to both the stabilizer
combination and substrate stabilized.” (Appeal brief, pages 6
and 9-10.) But the mere fact that the claimed invention is a
“selection invention” does not preclude a conclusion of
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007