Appeal No. 2006-2660
Application 10/007,021
brief and reply brief. See generally, In re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655,
1657 n.3. (Fed. Cir. 1990).
Appellants submit that Foster does not anticipate the claims because (1) the claims
require that a layer of nickel and then a strike layer of refectory metal or refractory metal alloy
and the reference describes to one skilled in this art an article wherein a chrome layer is between
the nickel layer and a layer of refractory metal or refractory metal alloy; and (2) the claims
require that the layer of refractory metal or refractory metal alloy is directly contacted by a layer
of refractory metal compound or refractory metal alloy compound which is uncoated and the
reference would have described further coating the layer of refractory metal compound or
refractory metal alloy compound (brief, pages 3-5). Appellants contend that the structure of
nickel layer, strike layer and uncoated outer layer as claimed is not shown in any of the
illustrative embodiments of Foster (id.). We disagree.
We initially determine that the plain language of claim 22 specifies an article having to
some extent on its surface a coating consisting essentially of, in order, a nickel layer, a metal
strike layer directly contacting the nickel layer, and an uncoated outer metal compound layer
directly contacting the strike layer, wherein the metal in each instance is zirconium, titanium or
zirconium-titanium alloy. The plain language of claim 32 specifies an at least partially coated
article comprises at least a substrate consisting essentially of zinc or aluminum, and a nickel
layer, a metal strike layer directly contacting the nickel layer, and an uncoated outer metal
compound layer directly contacting the strike layer, wherein the metal in each instance is
zirconium, titanium or zirconium-titanium alloy. We note here that claims 23 and 33, dependent
on claims 22 and 32, respectively, specify that the “compound” is carbides, oxides, nitrides and
carbonitrides.
The transitional term “consisting essentially of” in claim 22 opens the claim to
encompass articles that include additional layers and ingredients which do not materially effect
the basic and novel properties of the coating as established by the written description in the
specification, such as additional layers, which can be between the substrate and the nickel layer,
and several different nickel layers based on brightener additives (specification, e.g., page 4).
PPG Indus., Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354-57, 48 USPQ2d 1351, 1353-56
(Fed. Cir. 1998) (Patentees “could have defined the scope of the phrase ‘consisting essentially
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