Appeal No. 1998-2733
Application 08/718,613
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.
It is clear that claim 10 is drawn in product-by-process format with respect to the preparation
of the polymer layer from a polymer formulation containing certain components and with respect to the
preparation of the paint layer by electrostatically applied paint. See, e.g., In re Thorpe, 777 F.2d 695,
697, 227 USPQ 964, 966 (Fed. Cir. 1985). The painted object comprises at least two layers which
are the polymer layer and the paint layer. The polymer layer is derived from the polymer formulation
specified as “including,” that is, containing, at least two ingredients: any materials which in turn “include,”
that is, contain, either urea groups or urethane groups or materials which will form such groups, mixtures
of such ingredients; and a non-volatile metal salt conductivity inducing material. The “materials” would
additionally “include” any other ingredient, such as an enhancer for a non-volatile salt. Thus, we
interpret the claim language to require that the non-volatile salt must be associated with the other
ingredients of the polymer formulation including those materials that provide or form urea and/or
urethane groups, and provide conductivity to the polymer layer such that a layer of paint can be
electrostatically applied thereto. There is no limitation on the manner in which the formulation is used to
form the polymer or how the polymer is formed into a layer of the object. In view of the product-by-
process format, a painted object having the same characteristics of the electrostatically painted object as
specified in the claim but prepared by any other process would, of course, be encompassed by claim
10.
The interpretation to be made of the claim language “a non-volatile metal salt conductivity
inducing material” is in dispute. The examiner finds that this language does not exclude thiocyanate salts,
such as sodium thiocyanate, and points to conflicting disclosure in the written description on page 8 of
the specification, stating that “page 8, line 17 appears to include thiocyanate as a possible anion, but
later on the page [sic] disagrees with the use of thiocyanate, and . . . while thiocyanate may not be the
best salt to use, there is no claim that it is excluded from” (Paper No. 13, pages 7-8). Appellants
submit that “[t]he present invention excludes the SCN salts of [Ukai] by definition . . . [i]n the
specification, at page 8, line 23” (brief, page 6; emphasis in the original omitted).
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