Board finds use of "only a first wire set and a second wire set" trumps transition "comprising" to exclude other wire sets

Takeaway: The Examiner asserted that a claim reciting "only a first wire set and a second wire set" read on a prior art structure having three wire sets. The Examiner explained that the third wire set was not excluded because the claim used the transition "comprising." The Board found this construction unreasonable because the use of "only" inside the body of the claim limited the claim to two wire sets. The Board cited two Federal Circuit decisions in support of its reasoning, In re Skvorecz, 580 F.3d 1262 (Fed. Cir. 2009) and Mannesmann Demag Corp. v. Engineered Metal Products Co., Inc., 793 F.2d 1279 (Fed. Cir. 1986).

Details:

Ex parte King
Appeal 2011009265; Serial No. 11/317,551;  Tech. Center 3700
Decided  August 15, 2013

The application on appeal was directed to an apparatus for sectioning a plastic drum container, often used for shipping liquids. A representative claim on appeal read:

     1. A drum sectioner comprising:
     only a first wire set and a second wire set, wherein the first wire set includes at least one longitudinal wire and the second wire set includes only a first lateral wire and a second lateral wire, the first and second lateral wires and the at least one longitudinal wire cooperating with each other to support a
drum; and
     at least one power supply supplying electrical current through the at least one longitudinal wire,
     the first lateral wire and the second lateral wire to section the drum in multiple pieces.

The Applicant appealed an anticipation rejection of the above claim. The Applicant argued that the Wilgus reference disclosed three sets of wires, where the claim recited "only a first and second wire set." The Applicant also argued Wilgus disclosed more than two lateral wires, where the claim recited "second wire set includes only a first lateral wire and and second lateral wire".

In the Answer, the Examiner acknowledged that Wilgus disclosed three wires but asserted that the use of "comprising" did not exclude additional structures. Therefore, according to the Examiner, "the wire grid formed by frames 10 and 11 of Wilgus reads on the limitations of claim 1."

The Applicant did not file a Reply Brief.

The Board found that the Examiner had misconstrued the transitional phrase "comprising", and as a result, improperly ignored the term "only."

In this case, the first use of the word “only” applies to the first and second wire sets, and to the first and second lateral wires of the second wire set, and elements outside of those clauses are not limited. Thus, the Examiner has erred by finding that third wire set (attached to the frame 12) is not excluded from the claimed invention, and additional wires from the first and second lateral wires are not excluded from the second wire set. 
(Emphasis added.)

The Board cited two cases to explain its reasoning. The first case relied on by the Board was In re Skvorecz, 580 F.3d 1262, 1268 (Fed. Cir. 2009). The Federal Circuit in Skvorecz held that the Examiner was unreasonable in interpreting ‘comprising’ to allow some wire legs without offsets, despite limitations that "each wire leg" has an offset. The Board also relied on Mannesmann Demag Corp. v. Engineered Metal Products Co., Inc., 793 F.2d 1279, 1282 (Fed. Cir. 1986), which discussed construction of "consisting of" as used in the body of a claim. Mannesmann held that when a limiting term “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.”

My two cents: In my experience, Examiners often use the presence of the transition "comprising" as an excuse to ignore other limiting qualifiers within the claim. If you encounter this, try using the same reasoning as the Board did here to show the Examiner his error.