Appeal No. 2005-2175
Application 10/104,383
Thus, we find that the written description in the specification and the language of the
appealed claims do not convey the meaning of the term “backing layer” to one of ordinary skill
in this art. We find no further guidance to a definition of the term in the record before us.
Appellants submit that “[i]t is conventional in the art to use a balance layer or backing layer to
counteract the forces resulting from the top laminate layer,” arguing that “[t]he cited art relied
upon by the examiner shows this conventional backing layer” which is avoided “by a certain
treatment as described at pages 25 and 26 and this avoids a need for a backing layer” (brief, page
3). Appellants further describe “a decorative layer on both the upper and the lower surfaces of
the core” of Nelson as “a top layer and a backing layer,” arguing that Nelson requires a “backing
layer” while admitting that Pollock does not (id., page 14; original emphasis deleted).
Appellants cite no authority establishing that the term “backing layer” has a common, ordinary
meaning to one of ordinary skill in this the art consistent with the meaning of the term as argued,
and we find no support for appellants’ position in the written description in the specification
which does not disclose that the heat treatment described at pages 25 and 26 is an alternative to
the “need for a backing layer.” Furthermore, Nelson does not describe any layer having
characteristics that appellants contend constitutes a “backing layer.” Indeed, Nelson does not
require any manner of layer on the “bottom surface” of “a core” or describe a “decorative layer”
that can be used on the lower surface as a “backing layer” within appellants’ use of the term
(e.g., col. 2, ll. 20-21, col. 2, l. 52, to col. 3, l. 7, col. 4, ll. 32-33, col. 5, ll. 20-23, and FIG. 4),
and Pollock (col. 12, ll. 17-50) does describe, require or prohibit a layer of any kind on such
surface.
Therefore, on this record, we find that when the language of appealed claim 35 and of
appealed claims 52, 54, 56, 57 and 62 and the other appealed claims dependent on claim 35, is
considered as a whole as well as in view of the written description in the specification as it
would be interpreted by one of ordinary skill in the art, the claims in fact fail to set out and
circumscribe a particular area with a reasonable degree of precision and particularity, see In re
Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971), such that “those skilled in
the art would understand what is claimed when the claim is read in light of the specification.”
See The Beachcombers, Int’l. v. WildeWood Creative Prods., 31 F.3d 1154, 1158, 31 USPQ2d
1653, 1656 (Fed. Cir. 1994) (quoting Orthokinetics, Inc v. Safety Travel Chairs Inc., 806 F.2d
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