Appeal 2006-3235
Reexamination Control No. 90/006,696
1 As support for the argument that that even if “comprises” in Claim 11 is a
2 transitional term, the resulting presumption of open-endedness of the claim
3 has been rebutted, Appellant cites several decisions. The first is Innovad,
4 Inc. v. Microsoft Corp., 260 F.3d 1326, 59 USPQ2d 1676 (Fed. Cir. 2001),
5 which held that the presumption of open-endedness of a claim that employed
6 “comprising” as a transitional term had been rebutted to some extent by the
7 use of the term “single” in a paragraph (designated f by the court) in the
8 body of the claim. That paragraph read: “a single, bi-state switch operable
9 from the exterior of said case for activating said signal means to produce
10 said sequence of dual tone modulated frequency signals during said dialing
11 mode corresponding to said digits in said reprogrammable memory
12 means.”30 The court held that although the transitional term “comprising”
13 permits more than one bi-state switch, “[t]he term ‘single,’ however,
14 precludes the use of multiple [bi-state] switches to perform the activating
15 function for one phone number.” 260 F.3d at 1333, 59 USPQ2d at 1681.
16 This decision has no bearing on Appellant’s Claim 11, which does not
17 employ the term “single” or an equivalent term.
18 Appellant (Br. 31) also relies on AbTox, Inc. v. Exitron Corp.,
19 122 F.3d 1019, 43 USPQ2d 1545 (Fed. Cir.), modified on reh’g, 131 F.3d
20 1009, 46 USPQ2d 1735 (Fed. Cir. 1997), wherein the court construed the
21 claim term “a gas-confining chamber” to mean a single gas-confining
22 chamber, noting, inter alia, that “[r]epeatedly, the claim refers to ‘said
23 chamber’ as its describes various portions of the apparatus. This term itself,
24 ‘said chamber,’ reinforces the singular nature of the chamber.” 122 F.3d at
30 The claim (claim 22) is reproduced in Innovad at 260 F.3d at 1329,
59 USPQ2d at 1677-78.
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