Appeal No. 2004-1108
Application 09/756,833
written description in the specification on which to read the arbitrary approximations of suitable
volumes set forth at page 6 of the specification into the claim as a limitation.
The transitional term “comprising” opens claim 1 to include backpacks that at least have
the limitations specified in the claim and any additional component(s).2 See, e.g., Vehicular
Technologies Corp. v. Titan Wheel Int’l Inc., 212 F.3d 1377, 1383, 54 USPQ2d 1841, 1845 (Fed.
Cir. 2000); 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.”).
The examiner points out where in the Rota figures of a backpack, the rigid back and
bottom support plates and the continuous, flexible sidewall structural components required of the
claimed backpack by appealed claim 1 are found (answer, page 3). With respect to the claim
limitations involving the specified “internal storage volume,” the examiner contends that the
backpack of Rota “is capable of being used in the intended manner, i.e., the internal volume of
the backpack of Rota [is] sized to receive and retain a scooter if so desired,” noting that
“Applicant does not claim the scooter.”
We find, as a matter of fact, that as explained by the examiner, the disclosure of the
backpack in Rota constitutes substantial evidence establishing that, prima facie, the claimed
backpack encompassed by appealed claim 1, as we have interpreted this claim above, is
anticipated by the backpack of Rota as a matter of fact because each and every limitation of the
claimed backpack, arranged as required by claim 1, is found in Rota, either expressly or under the
principles of inherency. See generally, In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429,
1431 (Fed. Cir. 1997); Diversitech Corp. v. Century Steps, Inc., 850 F.2d 675, 677-78, 7
USPQ 1315, 1317 (Fed. Cir. 1988); Lindemann Maschinenfabrik GMBH v. American Hoist
and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
2 To the extent that the cited language of appealed product claim 1 is intended by appellant as a
method or process of use limitation of the claimed backpack, such a limitation has no place in a
product claim. Cf. In re Wiggins, 397 F.2d 356, 359 n.4, 158 USPQ 199, 201-02 n.4 (CCPA
1968), and cases cited therein (“[A]ppellant’s discovery of the analgesic properties of ‘O2’ and of
a composition containing it could properly be claimed only as a method or process of using that
compound or composition in accordance with the provisions of 35 U.S.C. 100(b) and 101.”).
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