Appeal No. 2006-2393
Application 10/439,947
claims 2 through 6 above, further in view of Sarkar (answer, page 6).3
We refer to the answer and to the brief for a complete exposition of the positions
advanced by the examiner and appellant.
The issues in this appeal require that we interpret representative independent claim 1 by
giving the terms thereof the broadest reasonable interpretation in their ordinary usage in context
as they would be understood by one of ordinary skill in the art in light of the written description
in the specification unless another meaning is intended by appellant as established therein, and
without reading into the claims any disclosed limitation or particular embodiment. See, e.g.,
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir.
2004); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re
Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Contrary to the examiner’s position (answer, page 8), we determine that when the
preambular language and the corresponding language in the body of the claim with respect to
“forming at least one paint line” is considered in the context of the claimed invention as a whole,
including consideration thereof in light of the written description in appellant’s specification, it
must be given weight as a claim limitation which characterizes the claimed method in order to
give meaning to the claim and properly define the invention. See generally In re Fritch, 972
F.2d 1260, 1262, 23 USPQ2d 1780, 1781 (Fed. Cir. 1992) (citing Perkin-Elmer Corp. v.
Computervision Corp., 732 F.2d 888, 896, 221 USPQ 669, 675 (Fed. Cir.), cert. denied, 469 U.S.
857 [225 USPQ 792] (1984), Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d
1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989), In re Stencel, 828 F.2d 751, 754-55,
4 USPQ2d 1071, 1073 (Fed. Cir. 1987). As appellant points out (brief, pages 6, 7 and 8), the
written description in the specification specifically defines the term “paint line” as “includes at
least two different paints which exhibit dried film properties that differ materially from each
other in at least one observable property” (page 9, ll. 12-15).
The plain language of claim 1 further specifies that the method for forming at least one
paint line comprises at least (1) providing a set comprising at least three prepaints, (2) dispensing
3 Claims 2 through 9 are all of the claims in the application and stand of record as submitted in
the amendment filed October 6, 2005, entered by the examiner in the advisory action mailed
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