Appeal No. 2004-1131
Application 09/562,632
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the examiner’s answer and to appellants’ brief for a complete exposition thereof.
Opinion
In order to review the examiner’s application of prior art to appealed claim 1, we must
first interpret the language thereof by giving the claim terms their broadest reasonable
interpretation consistent with the written description provided in appellants’ specification as it
would be interpreted by one of ordinary skill in this art, see In re Morris, 127 F.3d 1048,
1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997), without reading into these claims any
limitation or particular embodiment which is disclosed in the specification. See Morris, supra;
In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Priest,
582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA 1978). The plain language of claim 1 specifies a
composition comprising at least the three ingredients in the amounts specified in the claim. 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.”).
Appellants, in summarizing the invention, state that the silanes of formula “(|)” will “form
i) an ester bond with the acid group(s) of the aqueous, hydroxy-functional, acid group containing
resin dispersion,” citing page 5, lines 16-17 of the specification, and further argue this reaction as
a distinction of the claimed invention vis-à-vis Hatano and Tsuno (brief, pages 2 and 4-5). The
examiner contends that “the claimed coating composition does not require any sort of reaction
between the silane and the acid group containing resin dispersion” (answer, page 5; see also page
6). We agree with the examiner because we find no limitation in claim 1 with respect to the acid
value of the resin dispersion, and we will not read any limitation from the specification (e.g.,
page 4, lines 13-14, and the Examples) into the claim. See Morris, supra; Zletz, supra; Priest,
supra. We further determine that when the term “coating” is considered in the context of the
claim language as a whole as well as in light of the written description in appellants’
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