Xerox Corporation v. Google Inc. et al

Filing 163

CLAIM CONSTRUCTION ANSWERING BRIEF re 141 Claim Construction Opening Brief filed by Xerox Corporation. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11)(Day, John)

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2111.03 Transitional Phrases [R-3] - 2…
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2111.03 Transitional Phrases [R-3] - 2100 Patentability
2111.03 Transitional Phrases [R-3]
The transitional phrases "comprising", "consisting essentially of" and "consisting of" define the
scope of a claim with respect to what unrecited additional components or steps, if any, are
excluded from the scope of the claim.
The transitional term "comprising", which is synonymous with "including," "containing," or
"characterized by," is inclusive or open-ended and does not exclude additional, unrecited
elements or method steps. See, e.g., >Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71
USPQ2d 1837, 1843 (Fed. Cir. 2004) ("like the term 'comprising,' the terms 'containing' and
'mixture' are open-ended.").< Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368, 66
USPQ2d 1631, 1634 (Fed. Cir. 2003) ("The transition 'comprising' in a method claim indicates
that the claim is open-ended and allows for additional steps."); Genentech, Inc. v. Chiron Corp.,
112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997) ("Comprising" 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.); Moleculon Research Corp. v.
CBS, Inc., 793 F.2d 1261, 229 USPQ 805 (Fed. Cir. 1986); In re Baxter, 656 F.2d 679, 686, 210
USPQ 795, 803 (CCPA 1981); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) ("comprising"
leaves "the claim open for the inclusion of unspecified ingredients even in major amounts"). >In
Gillette Co. v. Energizer Holdings Inc., 405 F.3d 1367, 1371-73, 74 USPQ2d 1586, 1589-91 (Fed.
Cir. 2005), the court held that a claim to "a safety razor blade unit comprising a guard, a cap, and
a group of first, second, and third blades" encompasses razors with more than three blades
because the transitional phrase "comprising" in the preamble and the phrase "group of" are
presumptively open-ended. "The word 'comprising' transitioning from the preamble to the body
signals that the entire claim is presumptively open-ended." Id. In contrast, the court noted the
phrase "group consisting of" is a closed term, which is often used in claim drafting to signal a
"Markush group" that is by its nature closed. Id. The court also emphasized that reference to
"first," "second," and "third" blades in the claim was not used to show a serial or numerical
limitation but instead was used to distinguish or identify the various members of the group. Id.<
The transitional phrase "consisting of" excludes any element, step, or ingredient not specified in
the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448,
450 (Bd. App. 1948) ("consisting of" defined as "closing the claim to the inclusion of materials
other than those recited except for impurities ordinarily associated therewith."). But see Norian
Corp. v. Stryker Corp., 363 F.3d 1321, 1331-32, 70 USPQ2d 1508, 1516 (Fed. Cir. 2004)
(holding that a bone repair kit "consisting of" claimed chemicals was infringed by a bone repair kit
including a spatula in addition to the claimed chemicals because the presence of the spatula was
unrelated to the claimed invention). A claim which depends from a claim which "consists of" the
recited elements or steps cannot add an element or step. When the phrase "consists of" appears
in a clause of the body of a claim, rather than immediately following the preamble, it limits only the
element set forth in that clause; other elements are not excluded from the claim as a whole.
Mannesmann Demag Corp. v. Engineered Metal Products Co., 793 F.2d 1279, 230 USPQ 45
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(Fed. Cir. 1986). >See also In re Crish, 393 F.3d 1253, 73 USPQ2d 1364 (Fed. Cir. 2004) (The
claims at issue "related to purified DNA molecules having promoter activity for the human
involucrin gene (hINV)." Id., 73 USPQ2d at 1365. In determining the scope of applicant's claims
directed to "a purified oligonucleotide comprising at least a portion of the nucleotide sequence of
SEQ ID NO:1 wherein said portion consists of the nucleotide sequence from . to 2473 of SEQ ID
NO:1, and wherein said portion of the nucleotide sequence of SEQ ID NO:1 has promoter
activity," the court stated that the use of "consists" in the body of the claims did not limit the openended "comprising" language in the claims (emphases added). Id. at 1257, 73 USPQ2d at 1367.
The court held that the claimed promoter sequence designated as SEQ ID NO:1 was obtained by
sequencing the same prior art plasmid and was therefore anticipated by the prior art plasmid
which necessarily possessed the same DNA sequence as the claimed oligonucleotides. Id. at
1256 and 1259, 73 USPQ2d at 1366 and 1369.The court affirmed the Board's interpretation that
the transition phrase "consists" did not limit the claims to only the recited numbered nucleotide
sequences of SEQ ID NO:1 and that "the transition language 'comprising' allowed the claims to
cover the entire involucrin gene plus other portions of the plasmid, as long as the gene contained
the specific portions of SEQ ID NO:1 recited by the claim[s]" Id. at 1256, 73 USPQ2d at 1366.<
The transitional phrase "consisting essentially of" limits the scope of a claim to the specified
materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of
the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976)
(emphasis in original) (Prior art hydraulic fluid required a dispersant which appellants argued was
excluded from claims limited to a functional fluid "consisting essentially of" certain components. In
finding the claims did not exclude the prior art dispersant, the court noted that appellants'
specification indicated the claimed composition can contain any well-known additive such as a
dispersant, and there was no evidence that the presence of a dispersant would materially affect
the basic and novel characteristic of the claimed invention. The prior art composition had the
same basic and novel characteristic (increased oxidation resistance) as well as additional
enhanced detergent and dispersant characteristics.). "A 'consisting essentially of' claim occupies
a middle ground between closed claims that are written in a 'consisting of' format and fully open
claims that are drafted in a 'comprising' format." PPG Industries v. Guardian Industries, 156 F.3d
1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998). See also Atlas Powder v. E.I. duPont de
Nemours & Co., 750 F.2d 1569, 224 USPQ 409 (Fed. Cir. 1984); In re Janakirama-Rao, 317
F.2d 951, 137 USPQ 893 (CCPA 1963); Water Technologies Corp. vs. Calco, Ltd., 850 F.2d 660,
7 USPQ2d 1097 (Fed. Cir. 1988). For the purposes of searching for and applying prior art under
35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic
and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to
"comprising." See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355 ("PPG could have defined
the scope of the phrase 'consisting essentially of' for purposes of its patent by making clear in its
specification what it regarded as constituting a material change in the basic and novel
characteristics of the invention."). See also AK Steel Corp. v. Sollac, 344 F.3d 1234, 1240-41, 68
USPQ2d 1280, 1283-84 (Fed. Cir. 2003) (Applicant's statement in the specification that "silicon
contents in the coating metal should not exceed about 0.5% by weight" along with a discussion of
the deleterious effects of silicon provided basis to conclude that silicon in excess of 0.5% by
weight would materially alter the basic and novel properties of the invention. Thus, "consisting
essentially of" as recited in the preamble was interpreted to permit no more than 0.5% by weight
of silicon in the aluminum coating.); In re Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893,
895-96 (CCPA 1963). If an applicant contends that additional steps or materials in the prior art
are excluded by the recitation of "consisting essentially of," applicant has the burden of showing
that the introduction of additional steps or components would materially change the
characteristics of applicant's invention. In re De Lajarte, 337 F.2d 870, 143 USPQ 256 (CCPA
1964). See also Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (Bd. Pat. App. & Inter. 1989)
("Although 'consisting essentially of' is typically used and defined in the context of compositions of
matter, we find nothing intrinsically wrong with the use of such language as a modifier of method
steps. . . [rendering] the claim open only for the inclusion of steps which do not materially affect
the basic and novel characteristics of the claimed method. To determine the steps included
versus excluded the claim must be read in light of the specification. . . . [I]t is an applicant's
burden to establish that a step practiced in a prior art method is excluded from his claims by
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'consisting essentially of' language.").
OTHER TRANSITIONAL PHRASES

Transitional phrases such as "having" must be interpreted in light of the specification to
determine whether open or closed claim language is intended. See, e.g., Lampi Corp. v. American
Power Products Inc., 228 F.3d 1365, 1376, 56 USPQ2d 1445, 1453 (Fed. Cir. 2000) (The term
"having" was interpreted as open terminology, allowing the inclusion of other components in
addition to those recited); Crystal Semiconductor Corp. v. TriTech Microelectronics Int'l Inc., 246
F.3d 1336, 1348, 57 USPQ2d 1953, 1959 (Fed. Cir. 2001) (term "having" in transitional phrase
"does not create a presumption that the body of the claim is open"); Regents of the Univ. of Cal.
v. Eli Lilly & Co., 119 F.3d 1559, 1573, 43 USPQ2d 1398, 1410 (Fed. Cir. 1997) (In the context of
a cDNA having a sequence coding for human PI, the term "having" still permitted inclusion of
other moieties.). The transitional phrase "composed of" has been interpreted in the same manner
as either "consisting of" or "consisting essentially of," depending on the facts of the particular
case. See AFG Industries, Inc. v. Cardinal IG Company, 239 F.3d 1239, 1245, 57 USPQ2d 1776,
1780-81 (Fed. Cir. 2001) (based on specification and other evidence, "composed of" interpreted
in same manner as "consisting essentially of"); In re Bertsch, 132 F.2d 1014, 1019-20, 56 USPQ
379, 384 (CCPA 1942) ("Composed of" interpreted in same manner as "consisting of"; however,
court further remarked that "the words 'composed of' may under certain circumstances be given,
in patent law, a broader meaning than 'consisting of.'").
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2173.05(e) Lack of Antecedent Basis […
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2173.05(e) Lack of Antecedent Basis [R-5]

A claim is indefinite when it contains words or phrases whose meaning is unclear. The lack of
clarity could arise where a claim refers to "said lever" or "the lever," where the claim contains no
earlier recitation or limitation of a lever and where it would be unclear as to what element the
limitation was making reference. Similarly, if two different levers are recited earlier in the claim, the
recitation of "said lever" in the same or subsequent claim would be unclear where it is uncertain
which of the two levers was intended. A claim which refers to "said aluminum lever," but recites
only "a lever" earlier in the claim, is indefinite because it is uncertain as to the lever to which
reference is made. Obviously, however, the failure to provide explicit antecedent basis for terms
does not always render a claim indefinite. If the scope of a claim would be reasonably
ascertainable by those skilled in the art, then the claim is not indefinite. >Energizer Holdings Inc.
v. Int'l Trade Comm'n, 435 F.3d 1366, 77 USPQ2d 1625 (Fed. Cir. 2006)(holding that "anode gel"
provided by implication the antecedent basis for "zinc anode");< Ex parte Porter, 25 USPQ2d
1144, 1145 (Bd. Pat. App. & Inter. 1992) ("controlled stream of fluid" provided reasonable
antecedent basis for "the controlled fluid"). Inherent components of elements recited have
antecedent basis in the recitation of the components themselves. For example, the limitation "the
outer surface of said sphere" would not require an antecedent recitation that the sphere has an
outer surface. See Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359, 61 USPQ2d 1216, 1218-19
(Fed. Cir 2001) (holding that recitation of "an ellipse" provided antecedent basis for "an ellipse
having a major diameter" because "[t]here can be no dispute that mathematically an inherent
characteristic of an ellipse is a major diameter").
EXAMINER SHOULD SUGGEST CORRECTIONS TO ANTECEDENT PROBLEMS

Antecedent problems in the claims are typically drafting oversights that are easily corrected once
they are brought to the attention of applicant. The examiner's task of making sure the claim
language complies with the requirements of the statute should be carried out in a positive and
constructive way, so that minor problems can be identified and easily corrected, and so that the
major effort is expended on more substantive issues. However, even though indefiniteness in
claim language is of semantic origin, it is not rendered unobjectionable simply because it could
have been corrected. In re Hammack, 427 F.2d 1384 n.5, 166 USPQ 209 n.5 (CCPA 1970).
A CLAIM TERM WHICH HAS NO ANTECEDENT BASIS IN THE DISCLOSURE IS NOT NECESSARILY
INDEFINITE

The mere fact that a term or phrase used in the claim has no antecedent basis in the
specification disclosure does not mean, necessarily, that the term or phrase is indefinite. There is
no requirement that the words in the claim must match those used in the specification disclosure.
Applicants are given a great deal of latitude in how they choose to define their invention so long
as the terms and phrases used define the invention with a reasonable degree of clarity and
precision.
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A CLAIM IS NOT PER SE INDEFINITE IF THE BODY OF THE CLAIM RECITES ADDITIONAL
ELEMENTS WHICH DO NOT APPEAR IN THE PREAMBLE

The mere fact that the body of a claim recites additional elements which do not appear in the
claim's preamble does not render the claim indefinite under 35 U.S.C. 112, second paragraph.
See In re Larsen, No. 01-1092 (Fed. Cir. May 9, 2001) (unpublished) (The preamble of the
Larsen claim recited only a hanger and a loop but the body of the claim positively recited a linear
member. The examiner rejected the claim under 35 U.S.C. 112, second paragraph, because the
omission from the claim's preamble of a critical element (i.e., a linear member) renders that claim
indefinite. The court reversed the examiner's rejection and stated that the totality of all the
limitations of the claim and their interaction with each other must be considered to ascertain the
inventor's contribution to the art. Upon review of the claim in its entirety, the court concluded that
the claim at issue apprises one of ordinary skill in the art of its scope and, therefore, serves the
notice function required by 35 U.S.C. 112, paragraph 2.).
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