Appeal No. 2006-0313
Application 10/300,276
The plain language of product claim 1 specifies a “solution” consisting essentially of at
least the four specified ingredients, each of which can be present in any amount, however small.
In this respect, we determine that when the phrase “[a]n electroless cobalt plating solution” is
considered in the context of the claim language as a whole as well as in light of the written
description in appellants’ specification, it reflects the intended use of the “solution,” which is a
composition. Thus, on this record, the preambular language requires only that the claim
encompass compositions which must be capable of functioning as an electroless cobalt plating
solution and otherwise adds no additional limitation(s) 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). To the extent that the
preambular language of product claim 1 is intended by appellants as a method or process of use
limitation of the claimed 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.”).
Thus, we interpret product claim 1 to encompass compositions consistently essentially of
at least the four specified ingredients as of the time the ingredients are mixed together.
Exxon Chem. Pats., Inc. v. Lubrizol Corp., 64 F.3d 1553, 1556-58, 35 USPQ2d 1801, 1803-05
(Fed. Cir. 1995) (“Consequently, as properly interpreted, Exxon’s claims are to a composition
that contains the specified ingredients at any time from the moment at which the ingredients are
mixed together.”). Contrary to appellants’ arguments (brief, pages 7-10), we find no limitation
in the claim language which limits the ingredients to those specified. The phrase “an ammonia-
free complexing/buffering agent” specifies that the claimed compositions must include some
amount, however small, of one or more agents which are “ammonia-free” and act as both a
“complexing” agent and a “buffering” agent. See Collegenet, Inc. v Applyyourself, Inc., 418
F.3d 1225, 1232, 75 USPQ2d 1733, 1739 (Fed. Cir. 2005), quoting Tate Access Floors, Inc. v.
Interface Architectural Res., Inc., 279 F.3d 1357, 1370 (Fed. Cir. 2002) (“It is well settled that
the term ‘a’ or ‘an’ ordinarily means ‘one or more.’”).
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