Ex Parte Krol

Board of Patent Appeals and Interferences

Oct 29, 2008

10692857 (B.P.A.I. Oct. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES D. KROL
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Appeal 2008-1794
Application 10/692,857
Technology Center 1700
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Decided: October 29, 2008
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Before CHUNG K. PAK, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant requests reconsideration of our Decision of May 28, 2008
(“Decision”) wherein we sustained the Examiner's rejections of the appealed
claims under 35 U.S.C. § 103(a). Appellant contends that “the Board erred
in (1) construing the claim language of independent claims 1, 11, 16 and 22,
and (2) determining that the Examiner met his burden of making a prima
facie case of obviousness based on the applied art.” (Request for Rehearing
“Request” 2.)
Appeal 2008-1794
Application 10/692,857

2
We have reviewed our Decision in light of the arguments presented by
Appellant in the Request. However, we are not persuaded that our Decision
was in error.
Turning first to the issue of claim interpretation, Appellant contends
that the Board incorrectly interpreted the claim term “being,” as used to
define the base layer in claims 1 and 11, as an open term, similar to the
claim term “comprising.” (Request 3.) Appellant maintains that the term
“being” is “a closed term meaning ‘is,’ [] thus, precluding any additional
components in the base layer other than the dry formulated flour and cheese
mixture.” (Request 3.) Appellant thus contends that the Board erred in
interpreting claims 1 and 11 as open to include additional, unrecited
components in the base layer. (Request 4.)
Appellant presents a similar argument in connection with method
claims 16 and 22. Appellant notes that these claims require a first step of
“preparing a formulated flour, wherein the formulated flour is a dry
mixture,” i.e., a base layer. (Request 4-5.) According to Appellant, the
“sequence of steps [recited in each of claims 16 and 22] requires that the
base layer remain dry and that additional components cannot be added to the
base layer in a liquid form.” (Request 8.) Appellant thus contends that the
Board erred in interpreting claims 16 and 22 as open to include additional,
unrecited steps in which additional components are added to the formulated
flour to form the base layer. (Request 4.)
Non-conventional transitional phrases (i.e., other than “comprising,”
“consisting essentially of,” and “consisting”) are interpreted in light of the
Specification to determine whether open or closed claim language is
intended. See, e.g., AFG Industries, Inc. v. Cardinal IG Company, 239 F.3d
Appeal 2008-1794
Application 10/692,857

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1239, 1245 (Fed. Cir. 2001) (interpreting “composed of” in same manner as
“consisting essentially of” based on Specification and other evidence);
Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l Inc., 246
F.3d 1336, 1348 (Fed. Cir. 2001) (noting that the term “having” in
transitional phrase “does not create a presumption that the body of the claim
is open”); Lampi Corp. v. American Power Products Inc., 228 F.3d 1365,
1376 (Fed. Cir. 2000) (interpreting “having” as open terminology, allowing
the inclusion of other components in addition to those recited).
It is clear from the Decision that we interpreted claims 1, 11, 16, and
22 in light of the Specification. (See Decision 5-9.) Appellant has not
explained why our claim interpretation is inconsistent with the Specification.
Nor has Appellant cited relevant case law to support the contention that the
terms “being” and “is,” as used in the context of the claims, are properly
construed as closed terminology precluding subsequent modification of the
initial, dry mixture.
We now turn to Appellant’s contention that the Board erred in
“determining that the Examiner met his burden of making a prima facie case
of obviousness based on the applied art.” 37 C.F.R. § 41.52(a)(1) states that
a “request for rehearing must state with particularity the points believed to
have been misapprehended or overlooked by the Board in its Decision.” In
the Request, Appellant does nothing more than reiterate the same arguments
in support of nonobviousness relied upon in the original Appeal and Reply
Briefs. Presumably, Appellant is requesting reconsideration of these
arguments in light of their proposed claim construction. As Appellant has
not persuaded us of error in our claim interpretation, we need not reconsider
our decision to sustain the prior art rejections.
Appeal 2008-1794
Application 10/692,857

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In conclusion, based on the foregoing, we have granted Appellant’s
request to the extent that we have reconsidered our decision, but we deny
Appellant’s request to make any change therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

DENIED

PL Initial:
Sld

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