Appeal 2007-2910
Application 10/304,881
1 this opinion, we will construe "wet adhesion properties" to mean simply
2 "wet adhesion" although this construction may be narrower than what is
3 intended or justified in view of the specification.12
4 The specification notes that wet adhesion is a problem for water-based
5 paints applied to previously painted surfaces, particularly where the previous
6 coating was an alkyd-type coating.13 We note that the claim does not
7 require the previous paint on the surface to be of any particular type.
8 Moreover, the specification notes that other approaches exist for improving
9 wet adhesion.14
10 The claim does not require the wet adhesion to be improved (or even
11 particularly good), but rather that the water-based paint composition be of
12 the type in which wet adhesion properties exist. Since both the improvement
13 and the water-based paint composition are open to the inclusion of other
14 elements, the wet adhesion of the water-based paint may be attributable to an
15 unlisted element.
16 Despite the ambiguities created by the improper form of claim 16, we
17 believe we can discern enough about the scope of the claim to resolve the
18 rejection without resorting to a remand for an indefiniteness rejection.15 The
19 claim is directed to a previously painted surface that is subsequently painted
20 with a water-based paint. Required constituents of the water-based paint
21 composition include:
22 (1) a pigment grind;
12 The Board is required to give a claim its broadest reasonable construction.
E.g., In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)
(reversing for use of an overly narrow claim construction).
13 Spec. ¶0001.
14 Spec. ¶¶0004 & 0005.
15 Ex parte Tanksley, 26 USPQ2d 1384, 1387 (BPAI 1991).
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: September 9, 2013