Appeal No. 2005-1787 5
Application No. 10/211,027
... lithographic coating or combinations thereof (emphasis added).” See the
Specification, page 3, lines 26-30. The subject specification further indicates that the
claimed method is open to additional steps, such as “attaching one or more substrates to a
second outer surface of the polymeric film .... by any conventional method of attaching
including, but not limited to, adhesion, lamination, stitching, and mechanical fasteners ...”
See the Specification, page 5, lines 9-20. Therefore, we determine that the specification
as a whole indicates that the unclaimed coating steps described in Cicci do not materially
affect the basic and novel characteristics of the claimed method. Herz, 537 F.2d at 551-
52, 190 USPQ at 463; Ex parte Boukidis, 154 USPQ 444 (Bd. App. 1966). On this
record, the appellants have not demonstrated that the unclaimed coating steps described
in Cicci materially affect the basic and novel characteristics of the claimed method. In re
De Lajarte, 337 F.2d 870, 874, 143 USPQ 256, 258 (CCPA 1964) (The appellants have
the burden of showing that the basic and novel characteristics of a claimed invention is
materially affected by unclaimed features). In fact, the appellants’ own statements in the
specification are contrary to the appellants’ new position set forth in the Brief.
Second, as correctly found by the examiner (Answer, pages 3 and 6), Cicci’s
teaching relating to preference for using a UV-light having a wavelength in the range of
400 nm to 450 nm corresponds to the claimed UV light substantially freed of wavelengths
of about 230 nm to about 265 nm. Although Cicci at column 4, lines 29-34, exemplifies
using a V-bulb emitting “80% of usable energy in the 400 to 450 nm range,” such example
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