Appeal No. 94-4409
Application 07/958,526
when added thereto.
In Ex parte Davis, 80 USPQ at 450, where the appealed
claims recited an adhesive composition ?consisting essentially
of? three ingredients and the prior art reference disclosed a
composition having the same three ingredients plus a fourth
ingredient (referred to as a modifier), the question raised
was whether the claim language ?consisting essentially of?
excluded the fourth ingredient. The Davis board held, based
on the facts before it, that the fourth ingredient was
excluded because when added to the three ingredient
composition of the appealed claims, it materially changed the
fundamental character of the claimed composition. Id.
However, in Herz, 190 USPQ at 463, in reviewing the
evidence before it, the court found nothing that would
indicate that a dispersant, which was an additional ingredient
of a prior art composition, would materially affect the basic
and novel characteristics of the claimed composition therein;
the court noting that the prior art composition possessed
additional enhanced detergent-dispersant qualities because of
this component.
As noted by the examiner, the Uhl patent discloses a
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