Appeal No. 2004-2294
Application 10/002,343
40 USPQ2d 1309, 1311 (Fed. Cir, 1996), citing In re Dillon, 919 F.2d 688, 693, 16 USPQ2d
1897, 1901 (Fed. Cir. 1990)(in banc); see also In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d
1040, 1042 (Fed. Cir. 1992).
We cannot agree with appellants’ argument that Nishino teaches away from the claimed
invention in disclosing that substrates of calcium aluminate must include titanium oxide to
provide heat resistance. The difficulty that we have with this argument is that the claim
language “a ceramic substrate” in appealed claim 1 does not exclude the ceramic substrate of
Nishino if that ceramic substrate has the specified properties. Similarly, the language “the
substrate comprises a material selected from the group consisting of . . . ” in appealed claim 3
specifies that the ceramic substrate of this claim must have at least one of the four members of
the Markush group that includes calcium aluminate, and through the use of the openended term
“comprising,” can include any other ingredient. 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 additional ingredient(s) thus permitted by claim 3 opens the
claim to include the ceramic substrate of Nishino if it satisfies the properties required by claim 1.
Indeed, it is well settled that the language of a claim must be interpreted 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, without
reading into the claim any limitation or particular embodiment which is disclosed in the
specification. See 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); In re Priest,
582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA 1978).
We also cannot agree with appellants that the absence of a disclosure of the specific
properties specified for the ceramic substrate in appealed claims 1 and 3, in the references is a
matter of inherency which cannot be considered where the ground of rejection involves
obviousness under § 103(a). It is apparent from the authority cited by the examiner above and
we cite here, that where the examiner reasonably establishes that the claimed and prior art
materials reasonably appears to be identical or substantially identical even though the prior art
does not disclose a particular property claimed or asserted for the claimed product, the burden
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