Appeal No. 2005-0567
Application 10/280,391
66 F.3d 1211, 1217-18, 36 USPQ2d 1225, 1229 (Fed. Cir. 1995) (“The use of the word ‘about,’
avoids a strict numerical boundary to the specified parameter. Its range must be interpreted in its
technological and stylistic context.”); see also Eiselstein v. Frank, 52 F.3d 1035, 1038-40,
34 USPQ2d 1467, 1470-71 (Fed. Cir. 1995).
The term “consisting essentially of” defining the “composition in claims 1 through 6,
9 and 12 is used in claim construction to indicate 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 Indus., Inc. v. Guardian Indus. Corp., 156 F.3d 1351,
1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998). Thus, the interpretation of this term requires
a determination of whether the inclusion in the claimed composition of additional element(s) in
the amount(s) taught in the applied prior art would materially affect the basic and novel
characteristics of the claimed composition, because this term customarily excludes such
materials. See Herz, supra (explaining Ex parte Davis, 80 USPQ 448 (Pat. Off. Bd. App. 1948)).
In arriving at this determination, the written description of the written description in appellants’
specification must be considered. Herz; supra (“[I]t is necessary and proper to determine
whether [the] specification reasonably supports a construction” that would exclude or include
particular ingredients.); see also PPG Indus., 156 F.3d at 1354-57, 48 USPQ2d at 1353-56
(Patentees “could have defined the scope of the phrase ‘consisting essentially of’ for purposes of
its patent by making clear in its specification what it regarded as constituting a material change
in the basic and novel characteristics of the invention. The question for our decision is whether
PPG did so.”).
Our review of the written description in the specification reveals no teachings of
additional elements that materially affect the basic and allegedly novel characteristics of the
claimed compositions, which are disclosed to form alloys that are castable and weldable
(specification, e.g., page 2, [0007]). Therefore, it is appellants’ burden to establish that elements
contained by the alloys of Sekino which are not specified in appealed claims 1 through 6, 9 and
12 would be deleterious to the basic and allegedly novel characteristics of the compositions
falling within these claims, and thus excluded from the claims by use of the transitional term
“consisting essentially of.” See PPG Indus., supra; Herz, supra.
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