Appeal 2007-0885
Application 10/053,497
ordinary skill in the art.” See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004). See also, Phillips v.
AWH Corp., 415 F.3d 1303, 1313, 75 USPQ2d 1321, 1326 (Fed. Cir.
2005)(citing, inter alia, In re Nelson, 280 F.2d 172, 181, 126 USPQ 242,
251 (CCPA 1960) (“The descriptions in patents are not addressed to the
public generally, to lawyers or to judges, but, as section 112 says, to those
skilled in the art to which the invention pertains or with which it is most
nearly connected.”)). As pointed out by the Examiner, claim 1 uses the term
“comprising” and, therefore, does not appear to exclude reactive hot melt
adhesive components. (Answer 7). See In re Crish, 393 F.3d 1253, 1257,
73 USPQ2d 1364, 1367 (Fed. Cir. 2004) (quoting Genentech, Inc. v. Chiron
Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir.1997)
("'[c]omprising' 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"). Consequently, the burden
is on Appellants to identify some teaching in the Specification or provide
evidence which establishes that one of ordinary skill in the art would
understand the term “thermoplastic hot melt adhesive” as excluding other
components. The unsupported arguments of counsel are simply not
sufficient to meet this burden. While claims 21 and 30 use the language
“consisting essentially of” rather than “comprising”, as properly pointed out
by the Examiner, the burden is likewise on Appellants to show that the
introduction of additional components would materially change the
characteristics of the claimed invention. Appellants have not met this
burden.
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