Appeal 2006-3235
Reexamination Control No. 90/006,696
1 c. rotating a second set of four cubes about a
2 second axis; and
3 d. repeating steps (b) and (c) until the preselected pattern is
4 achieved.
5 793 F.2d at 1263, 229 USPQ at 806-07 (emphasis added). The court
6 construed the nontransitional “comprising” in step (b) as closed rather than
7 open-ended because steps (a) and (c) differed from step (b) by not
8 employing “comprising” or a similar term:
9 8. During the oral argument, Moleculon argued
10 that the word “comprising” in step (b) (“rotating a first
11 set of cube pieces comprising four cubes about a first
12 axis”) means that the step covers four cubes or more.
13 “Comprising” is not used here as a transitional phrase
14 and has no special legal effect as such. Hence, it should
15 be interpreted according to the normal rules of claim
16 interpretation. No analogous word precedes the
17 structural recitation of the number of cube pieces in steps
18 (a) and (c). “Comprising” in step (c) [sic, (b)] reasonably
19 interpreted means “having” but not “having at least.”
20 Moleculon, 793 F.2d at 1272 n.8, 229 USPQ at 812 n.8. This Moleculon
21 holding clearly has no applicability to Appellant’s Claim 11, which does not
22 recite a plurality of steps, let alone at least one step that employs the term
23 “comprises” or “comprising” and at least one step that does not.
24 For the foregoing reasons, we hold that “comprises” in Claim 11 is
25 nontransitional and open-ended and thus does not preclude the claimed
26 “liquid crystal” from being part of a mixture containing another liquid
27 crystal material.
28 We would have reached the same conclusion regarding the scope of
29 Claim 11 even if we had held that “comprises” is used therein as a
30 transitional term and thus renders the claim presumptively open-ended.
37
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