Appeal No. 2005-1574
Application 09/753,428
13 USPQ2d 1320, 1322 (Fed. Cir. 1989). The plain language of claim 21, drawn in product-by-
process format, encompasses a synthetic wood-like product having an external foam skin and a
foam core characterized as being made by the method comprising at least the steps stated in the
claim, and accordingly, encompasses any synthetic wood-like product prepared by any process
which results in the characteristics imparted at least by the specified method steps. See
generally, In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985); In re
Bridgeford, 357 F.2d 679, 680-83, 149 USPQ 55, 56-58 (CCPA 1966). We point out that the
transitional term “comprising” opens claim 21 to include any manner of additional steps,
elements and materials in forming a synthetic wood-like product having “an external foam skin
and a foam core.” See, e.g., Vehicular Technologies Corp. v. Titan Wheel Int’l Inc., 212 F.3d
1377, 1383, 54 USPQ2d 1841, 1845 (Fed. Cir. 2000); 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.”).
The principal issues in this appeal focus on step “E.)” of claim 21. Prior to this step, at
least the specified ingredients are admixed as required in steps “A.)’ through “C.)” and then
plastified and extruded through “a plastifying and extruding means” in step “D.).” We find that
the “a plastifying and extruding means” clause specifies “means for” the function of plastifying
and extruding but does not define structure which satisfies that function and thus, the strictures
of 35 U. S. C. § 112, sixth paragraph, apply. See Texas Digital Systems, Inc. v. Telegenx, Inc.,
308 F.3d 1193, 1208, 64 USPQ2d 1812, 1822-23 (Fed. Cir 2002), and cases cited therein.
Therefore, the “means” language in this clause must be construed as limited to the
“corresponding structure” disclosed in the written description in the specification and
“equivalents” thereof. In re Donaldson Co., Inc., 16 F.3d 1189, 1192-95, 29 USPQ2d 1845,
1848-50 (Fed. Cir. 1994) (en banc). The “corresponding structure” is that “structure in the
written description necessary to perform that function [citation omitted],” that is, “‘the
specification . . . clearly links or associates that structure to the function recited in the claims.’
[Citation omitted.]” Texas Digital Systems, supra. “[A] section 112, paragraph 6 ‘equivalent[]’
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