Multiple components from the prior art cannot be pieced together to provide the structure and function of one claim recitation

I see this a fair amount, and actually just prepared a response last week where the Examiner had so construed a reference, and so this decision caught my eye.

In Ex parte de Ceuster, the Examiner had combined two components of the prior art, a masking layer 2 and insulating layer 20, in order to meet the structure and function of the single claim recitation “first insulator”.  The Board held that neither masking layer or the insulating layer of the prior art alone had the structure and function of the recited first insulator.  In their decision, the Board made what should be the unnecessary restatement of a sentence construction principle that “The words that follow “a first insulator” apply to “a first insulator,” i.e., a single insulator.” and continued by holding  “Although the transitional phrase “comprising” of the claims allows for further insulators at least one insulator, i.e., an insulator that can be termed a “first insulator,” must meet all of the structural and positional limitations recited as applying to “a first insulator”.  The Board cited Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d 1326, 1332 (Fed. Cir. 2001) that provides this little gem – ‘The open-ended transition ‘comprising’ does not free the claim from its own limitations. ‘

Happy prosecuting.