Appeal No. 2006-2247
Reexamination Nos. 90/006,554 and 90/006,894
1 transitional term “comprising” in defining the step(s) of the claimed process. In
2 claim drafting, the term “comprising” not only alerts potential infringers that the
3 recited steps are essential, but that other unrecited steps may be performed and still
4 form a construct within the scope of the claim. See, e.g., In re Baxter, 656 F.2d
5 679, 686, 210 USPQ 795, 802 (CCPA 1981). Thus, we construe the claimed
6 process to read on processes that include a further step, such as adding
7 hydrochloric acid to facilitate recovery of the N-oxide product.
8 With this claim construction in mind, we turn to the examiner’s rejection.
9 Under 35 U.S.C. § 103(a), a claimed invention is unpatentable if the
10 differences between it and the prior art are “such that the subject matter as a whole
11 would have been obvious at the time the invention was made to a person having
12 ordinary skill in the art to which the subject matter pertains.” The Supreme Court
13 of the United States has held that the factual inquiry into whether claimed subject
14 matter would have been obvious includes a determination of: (1) the scope and
15 content of the prior art; (2) the differences between the claimed subject matter and
16 the prior art; (3) the level of ordinary skill in the art; and (4) secondary
17 consideration (e.g., the problem solved) that may be indicia of (non)obviousness.
18 Graham v. John Deere Co., Inc., 383 U.S. 1, 17-18 (1966).
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