Appeal No. 2006-0445
Application 08/977,374
29 USPQ2d 1845, 1848-50 (Fed. Cir. 1994) (in banc); In re Zletz, 893 F.2d 319, 321-22,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Independent claim 36 encompasses any cover for any open-topped container, the cover
comprising at least any piece of any heat shrinkable film that covers the open top and extends
downward around the rim of any container, the film shrinking when exposed to heat but
unchanged upon exposure to radiant energy, wherein the downwardly extending portion includes
at least to some extent “a first means” which has the function of converting radiant energy to
heat so as to heat the downwardly extending portion thereby heat shrinking the downwardly
extending portion around the container rim. The transition term “comprising” and the term
“including” in the body of the claim open claim 36 to encompass covers containing other
additional layers, layer structures and other components, and the downward extending portion of
the heat shrinkable film to include other additional means to convert radiant energy to heat. 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.”); see also In re Bertsch, 132 F.2d 1014, 1019, 56 USPQ 379, 384 (CCPA 1942) (“it
is true that the word ‘comprising’ is usually in patent law held to be synonymous with the word
‘including’”); cf. Ex parte Davis, 80 USPQ 448, 449 (Bd. App. 1948) (“the word ‘comprising’
alone being synonymous with ‘including’”). Independent claim 41 encompasses a roll of heat
shrinkable film comprising at least a plurality of severable pieces of film formed in a continuous
web wherein each severable piece of film is specified essentially as the piece of film specified in
claim 1.
We find that each of claims 36 and 41 contain the limitation “a first means” for the
specified function of “to convert the radiant energy to heat” but do 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 limitation must
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