Appeal No. 2005-1411 Page 5
Application No. 10/340,772
“comprising,” does not exclude the presence of additional unrecited elements.3
The appellant also argues that Ewald does not disclose the ranges of thickness,
width, depth and length recited in claim 1. The following quotation from In re Woodruff,
919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), is applicable here:
The law is replete with cases in which the difference
between the claimed invention and the prior art is some
range or other variable within the claims. [citations omitted]
These cases have consistently held that in such a situation,
the applicant must show that the particular range is critical,
generally by showing that the claimed range achieves
unexpected results relative to the prior art range.
Ewald discloses that the sheet is cut to whatever size is required to form bottom and
side walls of desired length, width and height. In this case, the appellant has not come
forth with any explanation, much less evidence, showing that the claimed ranges of
thickness, width, depth and length achieve unexpected results relative to the tank of
Ewald so as to establish a patentable distinction between Ewald and the subject matter
of claim 1.
For the foregoing reasons, the appellant’s argument is not persuasive of any
error on the part of the examiner in rejecting claim 1 as being unpatentable over Ewald.
Thus, the rejection of claim 1, as well as claim 6 which the appellant has not argued
separately apart from claim 1 (see In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089,
3 The transitional term "comprising" is inclusive or open-ended and does not exclude additional,
unrecited elements. See In re Baxter, 656 F.2d 679, 686, 210 USPQ 795, 802 (CCPA 1981); Ex parte
Davis, 80 USPQ 448, 450 (Bd. App. 1948)("comprising" leaves "the claim open for the inclusion of
unspecified ingredients even in major amounts").
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