Appeal No. 2003-1162 Page 10
Application No. 09/468,292
term ‘consisting essentially of,’ the drafter signals that the invention necessarily includes the
listed ingredients and is open to unlisted ingredients that do not materially affect the basic and
novel properties of the invention.” PPG Industries v. Guardian Industries Corp., 156 F.3d 1351,
1354, 48 USPQ2d 1351, 1353 (Fed. Cir. 1998). In claim 61, the language “consisting essentially
of” precedes a list of substituents using alternative language, i.e., “halide, sulfate, ... or mixtures
thereof.” The claim, therefore, requires the presence of an ionic liquid with one of the listed
substituents or a mixture thereof. But the claim is also open to the additional presence of ionic
liquids with other substituents as long as the substituent does not materially affect the basic and
novel properties of the ionic liquid in the method of vaporizing reactants.
In order to understand what additional ionic liquids are encompassed by claim 61, one
must understand which additional Y- substituents will “materially affect the basic and novel
properties” of the ionic liquid. The Examiner finds that there is no guidance in the specification
as to what other substituents are encompassed (Answer, p. 20). We agree. The specification
merely uses the same words as the claims without further explanation (specification, p. 5, ll. 1-9
and p. 14, ll. 1-8). Moreover, the anion portion (represented as Y- in claim 61) is indicated as
having a determining effect on the chemical properties of the ionic liquid and some anions, such
as chloroaluminate, may react undesirably with certain precursor molecules (specification, p. 9,
ll. 22-28). The facts of record, therefore, indicate that the identity of the anion has an important
effect on the properties of the ionic liquid and that the effect may be detrimental. Which
additional anions will “materially affect the basic and novel properties” of the ionic liquid is
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