Appeal No. 2003-2114
Application No. 09/757,430
The examiner has found that claims 14, 20, and 23 are
misdescriptive in that each recites three air escape paths.
(Examiner’s Answer, page 7, lines 9-16). The gravamen of this
rejection is based on the examiner’s interpretation of the claims
at issue in that claim 12 recites “an” air path, while claim 14
recites “further comprising ... two air paths...” Claims 20 and
23 are said to suffer the same infirmity. (Id.)
Due to the grouping of claims, we focus on claim 12 and 14.
We determine that the examiner has misapprehended the scope of
claim 12 and claim 14. Claim 12 is written in comprising
language, which opens it up to any additional included elements,
be they disclosed in the specification or not. PPG Indus. v.
Guardian Indus. Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-
54 (Fed. Cir. 1998) citing Ex parte Davis, 80 USPQ 448, 449-50
(Pat. Off. Bd. App. 1948); Manual of Patent Examining Procedure
§ 2111.03 (6th ed. 1997) (Fully open claims that are drafted in a
"comprising" format). Thus, the statement that it include “an” air
path does not exclude a two, three, or four air path device from
falling within the scope of the claim.
The crux of the problem is found in the language of claim 14.
Claim 14 claims the apparatus “further comprising an ink filter
and two air paths.” The examiner is interpreting this as
1 The examiner withdrew the §112 rejection as it pertains to claims 12, 13, 15-
4
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