Appeal 2006-3437
Application 10/702,801
forth in the Answer, which we incorporate herein, and we add the following
primarily for emphasis.
We consider first the Examiner's obviousness-type double patenting
rejection. The Examiner acknowledges Appellants’ argument that the
claims of the co-pending application recite features not present in the
appealed claims, such as applying a first release system to the deposition
substrate before depositing the optical coating, applying a release system and
a transfer substrate to the second phrase of the optical coating, etc.
However, the Examiner correctly points out that the "comprising" language
of the appealed claims does not exclude the steps but, rather, encompasses
them. Also, although the claims of the co-pending application are silent
with respect to the bonding element being a ceramic-containing material, we
agree with the Examiner that Hastings evidences the obviousness of
employing the known bonding material in the method of the co-pending
application. Indeed, Appellants' Specification cites prior art for a ceramic-
containing bonding element (see page 10, last paragraph).
Appellants misstate the issue as "whether it would be obvious to omit
the steps involving the first release system, second release system, etc. as
recited in SN 10/681,767 to produce the presently claimed approach" (page
10 of principal Br., third paragraph), and erroneously state that the meaning
of "comprising" is "not relevant to the present inquiry" (page 2 of Reply Br.,
seventh paragraph). As explained by the Examiner, it is well settled that the
term "comprising" opens up the claim to all features that are not specifically
excluded therein and, consequently, it is not necessary that the appealed
claims specifically omit the pertinent method steps of the co-pending
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