Appeal No. 2004-1649
Application 09/864,770
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of obviousness found in the combined teachings of Blanco and Muzik
with appellant’s countervailing evidence of and argument for nonobviousness and conclude
that the claimed invention encompassed by appealed claims 8 through 10 would have been
obvious as a matter of law under 35 U.S.C. § 103(a).
The examiner’s decision is affirmed.
Other Issues
Appealed claim 8 as stated above and as it appears in the appendix to the brief, is as
amended in the amendment filed March 6, 2003 (Paper No. 6), including the recitation in step
“a),” “with said second layer of release coating.” We fail to find antecedent basis in the claim for
this “said” clause. Thus, the claim language raises the issue of whether the appealed claims
comply with the provisions of 35 U.S.C. § 112, second paragraph. However, in order to resolve
prior art issues in this appeal, thus avoiding piecemeal prosecution, we determine that a
reasonable, conditional interpretation can be made in light of the written description of the
specification without unsupported, speculative assumptions. Indeed, the disclosure in the
specification makes clear that the subject language should read “with a second layer of release
coating,” as set forth in a version of the claim recited in the brief (page 3). Cf. In re Steele, 305
F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962); Ex parte Saceman, 27 USPQ2d 1472,
1474 (Bd. Pat. App. & Int. 1993). We suggest that the examiner address this issue upon any
further consideration of the appealed claims subsequent to the disposition of this appeal.
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