Appeal No. 2006-1211
Application 10/277,697
interprets” the placing of the Maddox capsule in “hot water,” that is, “95° C.” to dissolve the
gelatin capsule (e.g., col. 4, ll. 13-15), “to include placing the [capsule] in the mouth with saliva”
(answer, page 6; see also pages 11-12).
Therefore, the examiner has not established a prima facie case of anticipation under
§ 102(b) or a prima facie case of obviousness under § 103(a), and accordingly, we reverse these
grounds of rejection. See generally, In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3. (Fed. Cir.
1990); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
The examiner’s decision is reversed.
Other issues
Dependent claim 5 is apparently intended to further limit the confectionery product of
claim 1 as follows:
wherein the release means comprises at least one hole and/or zones of reduced
thickness provided in the casing which is capable of eventually forming at least one
outside passage communicating with the filling.
We note that there is no corresponding claim dependent on any of the other independent claims.
We interpret claim 5 to plainly specify that “release means comprise at least” one hole or
zone of reduce thickness, wherein the open-ended term “comprises” opens the claim to
additionally include any other manner of “release means . . . capable of eventually forming at
least one outside passage communicating with the filling.” 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.”).
Since claim 5 specifies structure for the “release means,” is not subject to interpretation under
§ 112, sixth paragraph.
Thus, claim 5 is at odds with claim 1 on which it depends. This is because we interpreted
“release means” under § 112, sixth paragraph, above as being limited to the corresponding
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