Appeal No. 2006-0313
Application 10/300,276
triethanolamine, and tris(hydrozymethyl)aminoethane [sic, tris(hydroxymethyl)aminoethane1])”
(page 5, ll. 8-11). We determine that the synonymic terms “including” and “comprising” are
used in these disclosures in their common usage, open-ended meaning. This comports with
appellants’ intention set forth in the specification that the “detailed description is, therefore, not
to be taken in a limiting sense, and the scope of the present invention is defined only by the
appended claims” in which the transitional term “comprising” is used in original claim 1 (page 4,
l. 17, to page 5, l. 7, and page 10). See Exxon Chem. Pats., 64 F.3d at 1555, 35 USPQ2d at 1802
(“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
this respect, we find that appellants permissively disclose that “[i]n one example, the ammonia-
free electroless cobalt plating solution may include” certain ingredients; that one of the
advantages that the claimed solution “may have” is “creates less odor during plating (i.e., less or
no ammonia outgassing);” that “[i]t is, of course, understood that the present invention is not
limited to the formation of” certain structures and “layers” and can be used “in the fabrication of
various electronic devices as well as other industries;” and that “the invention defined by the
appended claims is not limited by the particular details set forth in the above description” (page
6, l. 3, page 7, ll. 1-2 and 6-7, page 8, ll. 7-10, and page 9, ll. 19-22).
It is appellants’ burden to establish that the components of the compositions of Dubin,
and indeed of Malik, which are not specified in appealed claim 1, would be deleterious to the
basic and allegedly novel characteristics of the composition of matter falling within this claims,
and thus, excluded from the claims by use of the transitional term “consisting essentially of.”
See PPG Indus., supra; Herz, supra. On this record, we determine that appellants have not
carried their burden.
Considering the examiner’s grounds of rejection of claim 1 under § 102(e) over Dubin, it
is well settled that the examiner has the burden of establishing a prima facie case of anticipation
under § 102(e) in the first instance by pointing out where each and every element of the claimed
1 See Monograph 9902. Tromethamine, The Merck Index 9899 (Twelfth Ed., Whitehouse
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