Appeal No. 2004-2292
Application 09/747,537
WARREN, Administrative Patent Judge, Concurring-in-part and Dissenting-in-part:
I concur with the panel’s decision to affirm the decision of the examiner for the
following reasons.
In order to review the eight grounds of rejection under 35 U.S.C. § 103(a) on
appeal (see above pp. 2-3), it is necessary to interpret the language of appealed
independent claims 1 and 19, drawn to product and method, respectively,5 by giving the
claim terms their broadest reasonable interpretation consistent with the written description
provided in appellants’ specification as it would be interpreted by one of ordinary skill in
this art, see In re Morris, 127 F.3d 1048, 054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997);
In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989), without
reading into these claims any limitation or particular embodiment which is disclosed in the
specification. See Morris, supra; Zletz, supra; In re Priest, 582 F.2d 33, 37, 199 USPQ
11, 15 (CCPA 1978).
Appealed product claim 1 is copied above (see p. 5). Appealed method claim 19,
as it stands of record,6 reads as follows:
19. A method for manufacturing a multi-layer polymeric shrink film comprising the steps
of
(a) coextruding a first skin layer comprising a polymer, a core layer comprising
polypropylene, a polymeric modifier, and a hydrocarbon resin, and a second skin
layer comprising a polymer;
(b) stretching the film of step (a) in the machine direction (MD) at a temperature
of 105/C or less; and
5 Appellants group the appealed claims along product and method lines, wherein the
claims of each group “stand or fall together” (brief, page 3). Thus, I have considered
appealed claims 1 and 19 as representative of the respective groups. 37 CFR §
1.192(c)(7) (2003); see also 37 CFR § 41.37(c)(1)(vii) (effective September 13, 2004;
69 Fed. Reg. 49960 (August 12, 2004); 1286 Off. Gaz. Pat. Office 21 (September 7,
2004)).
6 See the amendment filed June 23, 2003.
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