Appeal No. 95-2149
Application No. 08/026,039
one containing phosphorus, it can be selected from a quite
extensive list that includes triisooctyl phosphite and
tributoxyethyl phosphate, two compounds which make up the
claimed composition. Accordingly, it can be seen that the
examiner errs in stating that European '932 requires the
presence of the claimed components. Nonetheless, the
reference does render obvious within the meaning of § 103 a
lubricant comprising appellants' claimed components.
However, as urged by appellants, the claimed composition
is one "consisting essentially of" a trialkoxyalkyl phosphate
ester and a trialkyl phosphite ester. It is well settled that
claim language "consisting essentially of" limits the scope of
the claim to the ingredients specified therein and those that
do not materially affect the basic and novel characteristics
of the claimed composition. In re Herz, 537 F.2d 549, 551-52,
190 USPQ 461, 463 (CCPA 1976). In the present case, European
'932 discloses lubricating compositions comprising 100 parts
by weight of the lubricating oil, 2-20 parts by weight of the
condensed phosphorus compound and 5 to 30 parts by weight of
the organic compound containing phosphorus. On the other
hand, appellants' specification does not disclose that the
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