Appeal 2006-3235
Reexamination Control No. 90/006,696
1 2. The only liquid crystal material mentioned in the “Detailed
2 Description of the Invention” is K-18. (The other seven recited liquid
3 crystal materials are mentioned only in Claim 11.)
4 3. The specification does not mention using a mixture of liquid
5 crystals or liquid crystal materials for hot spot detection.
6 B. Principles of Law
7 “The word “comprising” transitioning from the preamble to the body
8 signals that the entire claim is presumptively open-ended.” Gillette Co. v.
9 Energizer Holdings, Inc., 405 F.3d 1367, 1371, 74 USPQ2d 1586, 1590
10 (Fed. Cir. 2005).29 A preamble is “an introductory phrase that may
11 summarize the invention, its relation to the prior art, or its intended use or
12 properties.” Donald S. Chisum, 3 Chisum on Patents § 8.06[1][b][ii] (2003).
13 Nontransitional occurrences of “comprising” and “comprises” are
14 “interpreted according to the normal rules of claim interpretation.”
15 Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261, 1272 n.8,
16 229 USPQ 805, 812 n.8 (Fed. Cir. 1986). As noted by Appellant, a
17 nontransitional occurrence of “comprising” was given a closed construction
18 in Moleculon, 793 F.2d at 1272 n.8, 229 USPQ at 812 n.8. However,
19 nontransitional occurrences of “comprising” were construed as open-ended
20 in Versa Corp. v. Ag-Bag Int’l Ltd., 392 F.3d 1325, 1329, 73 USPQ2d 1191,
29 In contrast, the transitional phrase “consisting of” signifies
restriction and exclusion of unrecited steps or components, Conoco,
460 F.3d at 1360, 79 USPQ2d at 1808 (citing MPEP § 2111.03), and the
transitional phrase “consisting essentially of” excludes ingredients that
would materially affect the basic and novel characteristics of the claimed
composition. Atlas Powder Co. v. E.I. Du Pont De Nemours & Co.,
750 F.2d 1569, 1574, 224 USPQ 409, 412 (Fed. Cir. 1984).
34
Page: Previous 27 28 29 30 31 32 33 34 35 36 37 38 39 40 41 Next
Last modified: September 9, 2013