Appeal No. 2003-2023
Application 09/581,440
(Flynn ‘212).2
The language of a claim must be interpreted prior to applying prior art thereto, and in this
respect, the language must be given the broadest reasonable interpretation in light of the written
description in appellants’ specification as it would be interpreted by one of ordinary skill in this
art. See, e.g., In re Thrift, 298 F.3d 1357, 1364, 63 USPQ2d 2002, 2006 (Fed. Cir. 2002); In re
Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d
319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). It is apparent from the plain language of
appealed claim 1 that the encompassed compositions comprise any amount, however small, of at
least one perfluorobutyl methyl ether and any amount, however small, of at least one of the
Markush group of acetate and formate esters, as well as any amount of any other ingredient(s),
without limitation on the nature of the composition. See generally, Exxon Chem. Pats., Inc. v.
Lubrizol Corp., 64 F.3d 1553, 1555, 35 USPQ2d 1801, 1802 (Fed. Cir. 1995) (“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.”).
In the ground of rejection under § 102(b), the examiner relies on the single appearance of
the term “perfluorobutyl methyl ether” in Flynn ‘595 which is in claim 4 thereof, alleging that the
reference thus teaches an “azeotrope-like composition containing a perfluorobutyl methyl ether in
combination with an organic solvent” that can include the disclosed ethyl acetate. The examiner
finds that these facts constitute an anticipation of the appealed claims (Paper No. 11, page 2;
answer, page 3). Appellants point out that the single appearance of said term in claim 4 of Flynn
‘595 does not enable such compositions (answer, pages 5-6).
The relevant part of claim 4 of Flynn ‘595 reads, “(a) perfluorobutyl methyl ether,
wherein the ether consists essentially of about 18 weight percent perfluoro-n-butyl ethyl ether,
and about 82 weight percent perfluoroisobutyl ethyl ether,” which forms azeotrope-like
compositions with a halo-hydrocarbon solvent. All of the other claims of the reference are
2 The grounds of rejection are set forth in the Office action of October 11, 2002 (Paper No. 15;
pages 2-3 and 4-5). See answer, page 3.
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