Appeal No. 2005-2131
Application 10/000,254
Guardian Indus. Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998).
Thus, the interpretation of this term requires a determination of whether additional layers in
liners taught in the applied prior art would materially affect the basic and novel characteristics of
the claimed method of appealed claim 1, because this phrase customarily excludes such
materials. See In re Herz, 537 F.2d 549, 551, 190 USPQ 461, 463 (CCPA 1976) (explaining
Ex parte Davis, 80 USPQ 448 (Pat. Off. Bd. App. 1948)). In arriving at this determination, the
written description in appellants’ specification must be considered. Herz; supra (“[I]t is
necessary and proper to determine whether [the] specification reasonably supports a
construction” that would exclude or include particular ingredients.); see also PPG Indus.,
156 F.3d at 1354-57, 48 USPQ2d at 1353-56 (Patentees “could have defined the scope of the
phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification
what it regarded as constituting a material change in the basic and novel characteristics of the
invention. The question for our decision is whether PPG did so.”).
Our review of the written description in the specification reveals that the liner can be
“less than or equal to 1.25 miles (less than 0.032 mm)” and “may be any polymeric or even thin
paper layer,” wherein “[r]elease layers, controlled release layers, and the like such as silicone
resins, acrylate resins, epoxy resins, and mixed resin functionalities can be used as extremely
thin coatings on the liner to control these properties as can corona discharge, sputtering,
oxidation, laser discharge, or chemical reaction of the surface” (page 9, ll. 17-18, and page 9, l.
29, to page 10, l. 8). Thus, contrary to appellants’ arguments, the liners having the thickness
specified in claims 1 and 6 can have additional “coatings” thereon which would provide
functionality and additional thickness, the construct not excluded from the claims by use of the
transitional term “consisting essentially of.” See PPG Indus., supra; Herz, supra.
We find, as did the examiner and contrary to appellants’ arguments, that Majkrzak would
have disclosed that “[a]mong the more useful methods of constructing . . . prerolled linerless
labels” are several which include the step of “partially severing individual labels on the
continuous sheet,” the composite of partially severed linerless labels on a “temporary, reusable
support material” can “then be fed into a conventional label applicator” (page 11, ll. 1-2, 4, 9-10,
and 16-17, and page 11, l. 30, to page 12, l. 4). Schumann would have disclosed that the
formation of bridges from flat form, web-like label stock, which can have two layers, can be
- 10 -
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007