Appeal No. 2005-0295
Application 10/151,586
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 find that the plain language of claims 1 and 11 specifies any
plasticizer in any amount, however small, for any corn protein in any amount, however small,
wherein the plasticizer can be one or more carbon components having as substituents at least one
electron acceptor functional group and at least one electron donor functional group in the
specified ratio of each type of functional group to total carbon atoms of the carbon compound
component(s) of the plasticizer (specification, e.g., page 6, l. 22, to page 8, l. 16). The
transitional term “comprising” opens claim 1 to include methods containing any manner of
step(s) in addition to the mixing step and any manner of additional ingredient(s), such as other
proteins and other plasticizers, in any amounts in the gum base composition, and opens claim 11
to include any manner of additional ingredient(s), such as other proteins and other plasticizers, in
any amounts in the gum base 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.”). Furthermore, the plain language
of appealed claim 11 specifies a “[a] gum base comprising” at least “corn protein and a selected
plasticizer,” and thus, this claim reads on a composition that consists of one protein and one such
plasticizer per se. See generally, Exxon Chem. Pats., supra.
To the extent that the cited language of product claim 11 is intended by appellants as a
method of use limitation of the claimed gum based composition, 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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