Appeal No. 2004-1649
Application 09/864,770
concrete structure” (page 3); the “decal . . . can be applied to both porous or non-porous
geological formations and a variety of different textured cements and concretes” (page 6).
We determine that one of ordinary skill in this art would interpret this language in the
written description of appellant’s specification to include application of the decal by the
disclosed method to any “uneven surfaces and even surfaces which might be characterized as
grainy or textured,” as stated on page 1, even though it is apparent that appellant’s preferred
embodiments are “a geological formation such as a rock or stone or to a concrete or cement
structure” (e.g., page 2). Thus, we interpret the subject language of claim 8 to similarly read on a
method of applying the decal to any “geological formation, concrete structure, or other grainy or
textured solid, non-flexible surface” that includes, but is not limited to, any “rock or other solid,
grainy, textured surface.” Indeed, we find no basis in the claim language as a whole of claim 8 or
any language in the written description of the specification which would limit the language of
claim 8 to the preferred embodiments. See Morris, 127 F.3d at 1054-55, 44 USPQ2d at 1027;
Zletz, 893 F.2d at 321-22, 13 USPQ2d at 1322; Priest, 582 F.2d at 37, 199 USPQ at 15.
We have carefully considered appellant’s contentions to the contrary (brief, pages 4-6).
However, it is well settled that applicant’s mere intent as to the scope of the claimed invention
does not so limit the scope of the claims which are otherwise definite when construed in light of
the specification as it would be interpreted by one of ordinary skill in the art. In re Cormany, 476
F.2d 998, 1000-02, 177 USPQ 450, 451-53 (CCPA 1973). Any conflict between appellant’s
intended invention and the actual scope of the claims should be addressed under 35 U.S.C. § 112,
second paragraph. Id.
Thus, we agree with the examiner that such well known grainy or textured solid, non-
flexible surfaces as wood, masonite and the so-called “gesso surfaces” that “comprise plaster of
paris or gypsum,” disclosed in Blanco (e.g., col. 4, lines 21-24 and 32-35) would fall within the
language of appealed claim 8 as we interpreted it above (answer, page 5).2
2 The examiner relies on evidence in Saff to support this ground of rejection but has not included
this reference in the statement of the ground of rejection (see answer, pages 3 and 5).
Accordingly, we have not considered Saff as here applied by the examiner. See In re Hoch,
428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970); Ex parte Raske, 28 USPQ2d
1304, 1304-05 (Bd. Pat. App. & Int. 1993).
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