Appeal No. 2002-0701
Application 09/201,269
as overprint lacquers or varnishes. ... an overprint lacquer or
varnish may be considered to be a printing ink composition of the
invention that has no opaque pigments” (page 20, line 24 -
page 21, line 1 and page 21, lines 4-6). The examiner does not
point out, and we do not find, where the specification indicates
that what the inventor invented and intended to encompass by the
claims is a branched vinyl resin per se, rather than a printing
ink, overprint lacquer or varnish composition.
In Corning Glass the preamble was: “An optical waveguide”.
Corning Glass, 868 F.2d at 1256, 9 USPQ2d at 1965. The court
stated that “contrary to Sumitomo’s argument, the core and
cladding limitations specifically set out in paragraphs (a) and
(b) are not the only limitations of the claim. [citation omitted]
The claim requires, in addition, the particular structural
relationship defined in the specification for the core and
cladding to function as an optical waveguide.” Corning Glass,
868 F.2d at 1257, 9 USPQ2d at 1966. Likewise, in the present
case the claims require not only the branched vinyl resin recited
in the body of the claims, but also that this resin be present in
a printing ink, overprint lacquer or varnish composition as set
forth in the claims’ preambles.
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