Appeal No. 2006-0468
Application 09/885,395
on the record as a whole, giving due consideration to the weight of appellants’ arguments in the
brief and the evidence in the specification to the extent relied on in the brief. See generally, In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We find ourselves in agreement with the examiner’s findings of fact from the references
and conclusions of law based thereon as set forth in the final action with respect to each ground
of rejection to which we add the following for emphasis.
The plain language of claim 19 specifies any manner of label comprising at least, “in the
order given,” a first adhesive layer comprising at least any amount, however small, of any
manner of heat activatable adhesive, and a second adhesive layer comprising at least any
amount, however small, of any manner of elastomeric microsphere adhesive, wherein the second
adhesive layer is “other than” any manner of “a hot melt adhesive layer.” The open-ended term
“comprising” used in transition and in the body of the claim opens the claim to include labels
containing any manner of other layers and additional ingredients in the layers, such as for
example, all of the labels that fall within claim 26. See generally, Exxon Chem. Pats., Inc. v.
Lubrizol Corp., 64 F.3d 1553, 1555, 35 USPQ2d 1801, 1802 (Fed. Cir. 1995) (“The claimed
composition is defined as comprising - meaning containing at least - five specific ingredients.”);
In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981) (“As long as one of
the monomers in the reaction is propylene, any other monomer may be present, because the term
‘comprises’ permits the inclusion of other steps, elements, or materials.”). Indeed, appellants
specifically state in the written description that “[t]he term ‘in the order given’ . . . does not
exclude . . . other layers” and disclose other ingredients which can be present (e.g., page 3,
ll. 17-19, and page 5, ll. 9-16). The term “heat activatable adhesive” is not defined in the written
description in the specification, it being disclosed that the term encompasses “generally an
adhesive that is non-tacky at room temperature,” and is not made definite by the definition of
“permanently bonded” (page 4, ll. 20-21). The term “hot melt adhesive” is not defined at all.
We agree with the examiner that the term has its common, art accepted, dictionary meaning
1 The examiner states the grounds of rejection in the answer but does not specify the Office
action in which the complete statement of the grounds of rejection can be found (page 3). We
find the complete statements in the final action.
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