Appeal No. 2005-2175
Application 10/104,383
print layer, with and without an overlay, on top of the thermoplastic layer and any other layers,
such as a tie layer between the “thermoplastic layer” and the “top surface” of the “core” and one
or more “bottom feet” layers on the “bottom surface” of the “core” as encompassed by appealed
claim 57 (specification, e.g., page 7, ll. 9-11 and 15-21, and page 14, l. 24, to page 16, l. 14). 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.”).
In reaching these determinations, we are mindful that appealed claim 35 specifies “the
proviso that no backing layer is present on the bottom surface of said core,” which language does
not appear in appealed claims 67 and 68. This limitation was inserted into claim 35 as originally
filed, by the amendment filed March 4, 2003, in which appellants did not set forth the basis in
the written description in the specification for the amendment (pages 2, 3 and 4). We cannot find
the term “backing layer” in the written description in the specification as filed, including the
disclosure involving the presently claimed planks (specification, e.g., page 5, ll. 18-27, page 20,
ll. 20-25, and originally filed claim 35). The term “backing layer” has various meanings in the
laminated product arts, whether extruded, coextruded or otherwise manufactured. The only layer
disclosed for the “bottom surface” of the “core” in the specification are “bottom feet” which can
be “soft thermoplastic material . . . post-extruded onto the bottom surface of the plank,” “can
have any dimensions,” and “can also assist in controlling sound transmissions . . . [as well as]
insure that migration from any mold, mildew, and/or stain which may be part of the sub-floor or
substrate can be minimized if not eliminated” (page 14, ll. 1-12). We find that embodiments
wherein such “bottom feet” are extruded on the “bottom surface” of a thermoplastic “core” could
be considered by one of ordinary skill in the art to be a “backing layer” under some definition of
the term used in the art, and, in this respect, would appear to be encompassed by and thus at
variance with the language of appealed claim 57 which, of course, is limited by claim 35 on
which it is dependent.
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