Appeal No. 2003-1516
Application 09/569,700
through some coupling means, such as an adhesive compound which can be a part of the
removable label as in appealed claim 20, sufficiently to avoid unintended separation of the
removable label from the surface of the digital disc without compromising the surface of the disc,
that is, interfering with the function of the disc as a digital medium. However, there is no
requirement in appealed claim 19 that the entirety of the label including the coupling means must
be removable, as there is for the article of manufacture of label technology in appealed claim 1.
Each of appealed claims 1 and 19 contains the limitation that the adhesive or coupling
means is such that “unintended separation” of the article of manufacture of label technology in
claim 1 or the removable label in claim 19 from the surface of the digital medium is avoided.
We fail to find in the written description in the specification any guidance in determining when
the adhesive or other coupling medium along with other components would result in an
embodiment that can produce an “unintended separation,” which is termed an “inadvertent”
detachment in the specification (e.g., page 7), for the entire range of applications disclosed (id.,
e.g., pages 8-9). Without such guidance, it is not apparent whether an article of manufacture of
label technology or a disc with a removable label which produces only “intended” separations in
some applications but only “unintended” separations in other applications is encompassed by the
appealed claims, and there is no limitation in claims 1 and 19 that otherwise restricts the
components of claimed embodiments in this respect.
Accordingly, issues under 35 U.S.C. § 112, second paragraph, are raised with respect to
appealed claims 1 and 19 and claims dependent thereon, all of which encompass this claim
language, because even upon considering the interpretation of this language in light of the written
description in the specification, the same is, at best, indefinite with respect to the embodiments
encompassed. However, in order to resolve prior art issues in this appeal, thus avoiding
piecemeal prosecution, we determine that a reasonable, conditional interpretation of the claim
language is that an embodiment would be encompassed where an “unintended separation” would
be readily apparent in the applications in which the embodiment is used in the art, which
interpretation can be made in light of the claim language and the written description of the
- 3 -
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007