Ex parte CATANEO et al. - Page 5




              Appeal No. 94-1549                                                                                        
              Application 07/945,540                                                                                    



                     A second error in regard to the examiner’s analysis of the patentability of claims                 
              2-15 under 35 U.S.C.  103 is that when the coated composition of Durham is                               
              contacted with water, it contains not only the solvent mixture but also the resin and                     
              sensitizer.  Thus, the composition relied upon by the examiner to meet the                                
              requirements of claim 2 on appeal contains a solvent mixture, a resin, a sensitizer, and                  
              water.  If claim 2 is properly put in independent form, it would be directed to a nail                    
              polish remover consisting essentially of the stated amounts of glycol ether ester, glycol                 
              ether, and water.  As set forth in In re Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ                      
              893, 896 (CCPA 1963):                                                                                     
                            The word 'essentially' [in 'consisting essentially of'] opens                               
                            the claims to the inclusion of ingredients which would not                                  
                            materially affect the basic and novel characteristics of                                    
                            appellant's compositions as defined in the balance of the                                   
                            claim.                                                                                      
              The examiner has failed to explain on what basis one of ordinary skill in the art would                   
              consider the nail polish remover composition of claim 1 to be open to the inclusion of a                  
              resin and a sensitizer.  Those compounds would appear to materially affect the basic                      
              and novel characteristics of the claimed nail polish remover composition.                                 
                     In summary, we affirm the rejection under 35 U.S.C.  103 as it pertains to claim                  
              1 and reverse the rejection as it pertains to claims 2-15.                                                



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