Appeal No. 2004-1110
Application No. 08/866,754
The appellants argue that claim 52 distinguishes over the
Kuhfus reference via the limitation “a single fastener for
coupling said two halves one to the other to form said
clamshell.” According to the examiner, “[t]he comprising
language does not preclude the reference from having additional
fasteners” (answer, page 3). This unfortunately worded statement
by the examiner suggests that the examiner believes the
“comprising” language of appealed independent claim 52 allows the
claim scope to encompass the plural fastener device of Kuhfus
notwithstanding the “single fastener” limitation of the
appellants’ claim. Such a belief is not well taken.
The term “comprising” permits the inclusion of other steps,
elements or materials. In re Baxter, 656 F.2d 679, 686, 210 USPQ
795, 802 (CCPA 1981). In the examiner’s view, this long
established definition should be broadened so that the term
“comprising” permits the inclusion of, not just other unrecited
elements, but also additional recited elements such as the here
claimed fastener. There simply is no authority for such a
broader definition. Moreover, the claim interpretation urged by
the examiner is antithetical to the “single fastener” limitation
expressly recited in claim 52. Because of its antithetical
impact, this interpretation does not comply with the requirement
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007