Appeal No. 2003-1516
Application 09/569,700
In order to apply the cited prior art to the appealed claims, we must first interpret the
terms thereof in light of the written description in the specification as interpreted by one of
ordinary skill in this art. See, e.g., In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667
(Fed. Cir. 2000); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir.
1997), In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). We find that
the plain language of appealed independent claim 1 requires an article of manufacture of label
technology comprising at least (1) a medium surface and (2) an adhesive compound applied to
one side of the medium surface. The “medium surface” of the “article of manufacture of label
technology” can be, inter alia, paper, such as a label, as well as other materials which can
provide a cover for the application surface of the digital medium (specification, e.g., page 7).
The “adhesive compound” must permit removal of the “entirety of the label technology,” that is,
the whole of the article of manufacture of label technology including the adhesive compound,
directly from the “application surface of a digital medium,” that is, the surface of the digital
medium to which the article of manufacture of label technology has been applied. The adhesive
compound also cannot compromise the surface of the digital medium and permits the article of
manufacture to sufficiently adhere to the application surface of the digital medium to avoid
unintended separation thereof. The “digital medium” can be a digital medium disc, such as set
forth in appealed claims 11 and 12.
The claimed article of manufacture of label technology as encompassed by appealed
claim 1 comprises at least the two specified components as well as additional components
through the transitional term “comprising,” such as electronic marker elements and a medium
disc attached on an application surface through the adhesive compound. See Exxon Chemical
Patents Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555, 35 USPQ2d 1801, 1802 (Fed. Cir. 1995)
(“The claimed composition is defined as comprising - meaning containing at least - five specific
ingredients.”); In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981) (“As
long as one of the monomers in the reaction is propylene, any other monomer may be present,
because the term ‘comprises’ permits the inclusion of other steps, elements, or materials.”).
We find that the plain language of appealed independent claim 19 requires a digital
medium disc comprising at least a removable label coupled directly to a surface of the digital disc
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