Appeal No. 2004-1649
Application 09/864,770
05, 162 USPQ 541, 550-51 (CCPA 1969).”). When the specification does not contain an express
definition, a reasonable, supported interpretation of the appealed claims that differs from that
urged by appellant can be used to determine the patentability of the claims. Morris, 127 F.3d at
1055-56, 44 USPQ2d at 1028-30 (“Absent an express definition in their specification, the fact
that appellants can point to definitions or usages that conform to their interpretation does not
make the PTO’s definition unreasonable when the PTO can point to other sources that support its
interpretation.”). Thus, “[i]t is the applicants’ burden to precisely define the invention, not the
PTO’s. See 35 U.S.C. § 112 ¶ 2 [statute omitted].” Morris, 127 F.3d at 1055-56, 44 USPQ2d at
1029.
We determine that the preambular language “a geological formation, concrete structure,
or other grainy or textured solid, non-flexible surface” and the language “a rock or other solid,
grainy, textured surface” in the body of appealed claim 8, when considered in the context of the
claimed invention as a whole, including consideration thereof in light of the written description
in appellant’s specification, must be given weight as a claim limitation which characterizes the
claimed method in order to give meaning to the claim and properly define the invention. See
generally In re Fritch, 972 F.2d 1260, 1262, 23 USPQ2d 1780, 1781 (Fed. Cir. 1992) (citing
Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 896, 221 USPQ 669, 675 (Fed.
Cir.), cert. denied, 469 U.S. 857[, 225 USPQ 792] (1984)); Corning Glass Works v. Sumitomo
Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989), In re Stencel,
828 F.2d 751, 754-55, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987).
Appellant’s specification includes the following disclosure: “a decal which has
application to uneven surfaces and even surfaces which might be characterized as grainy or
textured” (page 1); the “decal can be transferred to the surface of a geological formation such as
a rock or stone or to a concrete or cement structure” (page 2); the “decal . . . can be applied to
and adhere to a grainy, textured surface, such as concrete” (id.); the “decal . . . can be applied to
and adhere to a geological formation, such as a rock” (id.); the “decal . . . to decorate the surface
of a geological formation, such as a rock or a concrete structure” (id.); the “decal adherable to an
uneven grainy or textured surface, including that of a geological formation, such as a rock or a
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