Appeal 2007-3962
Application 10/005,846
phrase “for reducing hematologic toxicity” in a claim drawn to a method of
medicating a patient was non-limiting, and merely expressing a purpose for
the method); STX LLC. v. Brine, 211 F.3d 588, 591, 54 USPQ2d 1347, 1350
(Fed. Cir. 2000) (holding that the preamble phrase "which provides
improved playing and handling characteristics" in a claim drawn to a head
for a lacrosse stick was not a claim limitation); Kropa v. Robie, 187 F.2d
150, 152, 88 USPQ 478, 480-81 (CCPA 1951).
Second, we cannot agree with Appellants that claim 1 is directed to a
new use of a known composition of matter (Reply Br. 13). Appellants are
correct that new uses of known processes may be patentable. See 35 U.S.C.
§ 101 (1994) (“Whoever invents or discovers any new and useful process …
may obtain a patent therefor.”); and 35 U.S.C. § 100(b) (1994) (“The term
‘process’ means process, art or method, and includes a new use of a known
process, machine, manufacture, composition of matter, or material.”).
However, the claimed process here is not a method of using. Improving
mechanical strength is not a use, it is a result of changing the sheet
composition, for example, by adding elastomer. As admitted by Appellants,
the microporous sheet is of known composition. Therefore, in the method of
providing the microporous sheets of that known polyolefin and elastomer
composition, one is necessarily improving the mechanical strength as
required by claim 1.
Third, the word “improving” as used in claim 1 is a relative term.
Appellants argue that the improved mechanical strength results from adding
elastomer to the polyolefin, but the claim is not so limited. The claim is not
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