Appeal No. 2004-1649
Application 09/864,770
Accordingly, since a prima facie case of obviousness has been established by the
examiner, we have again evaluated all of the evidence of obviousness and nonobviousness based
on the record as a whole, giving due consideration to the weight of appellant’s arguments in the
brief. See generally, In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
The dispositive issue in this appeal is the interpretation to be made of the language “a
geological formation, concrete structure, or other grainy or textured solid, non-flexible surface”
and the language “a rock or other solid, grainy, textured surface” in the preamble and the body,
respectively, of appealed claim 8, because other than the surface to which the decal is applied in
Blanco, there is no dispute with respect to the method taught by the combined teachings of this
reference and Muzik.
We interpret the language of appealed claim 8 by giving the claim terms their broadest
reasonable interpretation consistent with the written description provided in appellant’s
specification as it would be interpreted by one of ordinary skill in this art, see In re Morris,
127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997) (“[T]he PTO applies to the
verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.”), without reading into these claims any
limitation or particular embodiment which is disclosed in the specification. See Morris, 127 F.3d
at 1054-55, 44 USPQ2d at 1027; In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989); In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA 1978). Thus, the terms in the
claim language must be given their ordinary meaning unless another meaning is intended by
appellant as established in the written description of the specification. See, e.g., Morris,
127 F.3d at 1054-55, 44 USPQ2d at 1027; Zletz, 893 F.2d at 321-22, 13 USPQ2d at 1322
(“During patent prosecution the pending claims must be interpreted as broadly as their terms
reasonably allow. When the applicant states the meaning that the claim terms are intended to
have, the claims are examined with that meaning, in order to achieve a complete exploration of
the applicant’s invention and its relation to the prior art. See In re Prater, 415 F.2d 1393, 1404-
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