Appeal No. 2000-0811
Application 08/964,734
prior art reference must either expressly or inherently describe
each and every limitation in a claim. Verdegaal Bros. v. Union
Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir.),
cert. denied, 484 U.S. 827 (1987).
One of the steps recited in claim 1 is this: “forming a
decal comprising a sheet having thereon a plurality of solder
members removably secured to said sheet . . . .” The appellants
argue (Reply at 2): “Only those decal materials which can be
formed into a sheet in the manner of a decal are included, thus
eliminating ceramics and metal which are not flexible from the
group of possible decal sheets listed at page 12, lines 23 and
24.” In that connection, the appellant’s brief on page 3 relies
on the following definition for “decal” in Random House Webster’s
Unabridged Dictionary, Second Edition, 1998 –- a specially
prepared paper bearing a picture or design for transfer to wood,
metal, glass, etc.
Both the appellants’ reliance on dictionary definition to
limit the material suitable for making a decal and the
appellants’ reference to the specification as only setting forth
possible materials including unsuitable materials for making the
decal are without merit. The specification on page 12, lines 21-
25 states:
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