Appeal No. 2005-0381 Page 4
Application No. 09/841,380
We affirm the Examiner’s decision with regard to all the rejections for the following
reasons.
OPINION
Anticipation of claims 33-35
The Examiner has rejected claims 33-35 as anticipated by Hess. We note that Appellants
have not grouped any of these claims separately (Brief, p. 11). We select claim 33 to resolve the
issues on appeal with regard to the anticipation rejection.
As correctly noted by Appellants (Reply Brief, pp. 3-4), Appellants and the Examiner
disagree as to the meaning an import to be ascribed to various phrases in claim 33, particularly
the phrases directed to the liquid composition and how it is manipulated within the apparatus. It
is claim interpretation which resolves the issues with respect to anticipation in this case and,
therefore, claim interpretation is where we start.
What we first note about the claims is that they are directed to an apparatus. That is key.
That is because “apparatus claims cover what a device is, not what a device does.” Hewlett-
Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468, 15 USPQ2d 1525, 1528 (Fed. Cir.
1990).
Looking at claim 33, the first limitation of the apparatus is stated as being “a liquid
coating composition.” But the liquid coating composition is the material being coated onto the
substrate to make the final product, the liquid coating composition is not in itself an apparatus
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