Appeal 2006-2269
Application 10/051,938
Examiner states that Duncan discloses a variety of applications for the
biodegradable lubricant, including use as hydraulic fluid (Answer 5-6).
We have considered all of Appellant’s arguments and find them
unpersuasive. We agree with the Examiner’s ultimate conclusion that the
claims are unpatentable over Duncan in view of Funkhouser.
Duncan indicates that the composition “TPE/C810/Ck8” contains a
hindered polyol (i.e., TPE (technical grade pentaerythritol)) and a mixture of
C6, C8, C10 and C12 carboxylic acids (i.e., “C810”) (see the footnotes to
Tables 1, 2, and 3). Moreover, Appellant discloses that suitable “hindered
polyols” include “but are not limited to . . . pentaerythritol, dipentaerythritol
. . .” (Specification 3, ll, 13-15), which are the same polyols used by Duncan
as above noted.
We note that Appellant uses the open-ended transitional language
“comprising” when claiming the biodegradable “fluid.” Such open-ended
claim language leaves the claim open to the presence of any other
compounds in addition to those recited in the claim. Genentech, Inc. v.
Chiron, Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997)
(“Comprising” is a term of art used in claim language which means that the
named elements are essential, but other elements may be added and still
form a construct within the scope of the claim). Therefore, the mere
presence of C10 and C12 acids in the “C810” mixture would not prevent
Duncan’s disclosure that “C810” also possesses C6 and C8 acids from
satisfying the particular claim feature of “at least two or more C5, C6, C7,
C8 and C9 linear monocarboxylic acids.”
We are not persuaded by Appellant’s argument that Duncan fails to
disclose that the polyol ester containing the “C810” with a C6 acid should be
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