Appeal No. 2005-2175
Application 10/104,383
the context of the claim language as a whole as well as in light of the written description in
appellants’ specification, it merely reflects the intended use of the “plank” comprising at least
any “core” comprising at least one thermoplastic material with the specified sides and any
“thermoplastic layer” comprising at least one thermoplastic material with at least one pigment
and located in any manner on top of the core, and adds no additional limitation(s) to the specified
core and layer and to the ingredients therein. See generally, Corning Glass Works v. Sumitomo
Elect. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989); In re Stencel,
828 F.2d 751, 754-55, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987); In re Tuominen, 671 F.2d 1359,
213 USPQ 89 (CCPA 1982). Indeed, the written description in the specification states that
“[t]he thermoplastic planks of the present invention can be used in a variety of applications,
including, but not limited to, wall panels, ceiling panels, flooring surfaces, decks, patios,
furniture surfaces, shelving, and other surfaces coverings or parts thereof,” and discloses “a
thermoplastic plank for surface coverings, such as flooring,” without specifying that a change in
structure of the plank is necessary for any particular application(s) (page 22, ll. 23-25, and page
20, ll. 20-25). To the extent that the cited claim language is intended by appellants as a “method
or process of use” limitation (see reply brief, page 2), such a limitation has no place in a product
claim. See In re Wiggins, 397 F.2d 356, 359 n.4, 158 USPQ 199, 201-02 n.4 (CCPA 1968).
The independent claims 35, 67 and 68 specify that the “thermoplastic layer” is “located
on said top surface of said core” There is no limitation in claims 35 and 47 through 69 with
respect to the manner of attachment of the “thermoplastic layer” to the core. We determine that
claim 68, couched in product-by-process format, specifies that “the core is made by extrusion”
and the “thermoplastic layer . . . is made by extrusion on the top layer surface of said core
simultaneously with or subsequent to extrusion of the core,” see generally, In re Thorpe,
777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985), but does not require that the extrusion
or coextrusion step includes adhering the “thermoplastic layer” to the “core.” The plain
language of appealed claim 67 specifies that any manner of “groove” is “located on at least two
opposing sides of said core” and that “no side of the core has a male edge.”
The open-ended term “comprising,” whether used as a transitional term or in the body of
the claim, opens the claims to include any manner of additional structure and ingredients in
addition to those specified, including, for example, conductive polymers and fillers as well as a
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