Appeal 2007-4097
Application 09/792,776
language “consisting essentially of” in claim 1 to exclude thermoplastic
resins from the pre-crosslinked softening agent (Br. 2 and 5).
The issue presented for our review is: Does the “consisting
essentially of” language exclude thermoplastic resins from the pre-
crosslinked softening agent? We answer this question in the negative.
The “consisting essentially of” language of the claim is open only for
the inclusion of unspecified ingredients or steps which do not materially
affect the basic and novel characteristics of the composition or method. In
re Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893, 895(CCPA 1963);
Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (Bd. Pat. App. & Int. 1989).
Claim 1 by virtue of its “consisting essentially of” language is open to
unspecified ingredients or steps depending upon whether such ingredients or
steps would materially affect the basic and novel characteristics of the here-
claimed method rather than the thermoplastic resin method/composition of
Tasaka and/or Hamanaka. Appellants contend that the embodiment of the
invention that included the thermoplastic resin and the pre-crosslinked
softening agent was the subject matter of canceled claim 11 (Br. 2-3).
Appellants contend “this embodiment results in a thermoplastic elastomer
composition with less mechanical strength than the embodiment
encompassed by claim 1” (Br. 3). In support of this position, Appellants
refer to the mechanical strength demonstrated by example 11 compared to
example 14 (Br. 3).
The showing referenced by Appellants is insufficient to establish the
basic and novel characteristics of the presently claimed invention. First, it is
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