Appeal 2007-2910
Application 10/304,881
1 improved. Moreover, the opening prepositional phrase "In a surface…"
2 raises more questions since the body of the claim appears to modify a water-
3 based paint composition applied to (i.e., "on") the surface rather than
4 something in the previously painted surface.
5 We note that all of the dependent claims begin "The surface…",
6 which suggests that the surface is the direct object of claim 16 from which
7 they all ultimately depend. The improvement also "comprises a water-based
8 paint composition applied thereto", where the "thereto" can only refer to
9 either the surface or the improvement, the latter of which would be obscure
10 to say the least. We would thus read the beginning of claim 16 as "A surface
11 previously coated with a paint composition, wherein the improvement
12 comprises…". One problem with this approach is that it is not our office to
13 rewrite claims to mean what we think the applicant intended;6 rather it is the
14 responsibility of the applicant to define the invention precisely.7
15 The rules specifically provide for claims to be written in
16 "improvement" format, in which case it is understood that the preamble
17 states the prior art and the improvement states the differences from the prior
18 art.8 Since Air Products has employed the improvement format, we must
19 construe paint-coated surfaces to have been conventional in the art.
20 The "improvement" part of the claim presents further problems in as
21 much as many of the limitations listed as improvements also appear to be
6 Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374, 69 USPQ2d
1857, 1859 (Fed. Cir. 2004) (a tribunal "may not redraft claims, whether to
make them operable or to sustain their validity").
7 35 U.S.C. § 112(1); In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023,
1029 (Fed. Cir. 1997).
8 37 C.F.R. § 1.75(e); Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550,
1553 (Fed. Cir. 1997). This format is sometimes called "Jepson" format.
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