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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