Appeal 2006-3235
Reexamination Control No. 90/006,696
1 1194 (Fed. Cir. 2004) and Georgia-Pacific Corp. v. U.S. Gypsum Co.,
2 195 F.3d 1322, 52 USPQ2d 1590 (Fed. Cir. 1999), discussed infra.
3 C. Analysis
4 Appellant alternatively argues (1) that the term “comprises” in
5 Claim 11 is not used as a transitional term and thus should be construed as
6 closed and (2) that even assuming “comprises” is used as a transitional term,
7 the resulting presumption of open-endedness of the claim has been rebutted
8 by other language in the claim.
9 As support for the argument that “comprises” in Claim 11 is not a
10 transitional term, Appellant contends that the language which precedes that
11 term does not fit the above definition of “preamble” given in Chisum on
12 Patents (“an introductory phrase that may summarize the invention, its
13 relation to the prior art, or its intended use or properties”) Br. 25. Because
14 Claim 11 is not in the format of a conventional process or apparatus claim,
15 we agree with Appellant that “comprising” as used therein is not a
16 “transitional” term in the sense of the case law holding that transitional uses
17 of “comprises” and “comprising” create a presumption that the claim is
18 open-ended rather than closed.
19 As a result, we will construe “comprising” in Claim 11 according to
20 the normal rules of claim construction, Moleculon, 793 F.2d at 1272 n.8,
21 229 USPQ at 812 n.8, which in this reexamination proceeding is the
22 broadest reasonable interpretation consistent with Appellant’s disclosure.
23 Amer. Acad., 367 F.3d at 1364, 70 USPQ2d at 1830; Yamamoto, 740 F.2d at
24 1572, 222 USPQ at 936-37.
25 The broadest reasonable interpretation of a nontransitional occurrence
26 of “comprises” has been held to be open-ended one. As explained in Versa:
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