Appeal No. 96-3946
Application No. 08/208,317
recording medium with a second uppermost layer, thereby
totaling three layers altogether. However, as pointed out by
the examiner (Answer, pages 10-11), the present claims say
"consists essentially of," which has been defined as
"includ[ing] the listed ingredients and [being] open to
unlisted ingredients that do not materially affect the basic
and novel properties of the invention." PPG Industries Inc. v.
Guardian Industries Corp., 156 F.3d 1351, 1354, 48 USPQ2d
1351, 1353 (Fed. Cir. 1998); In re Herz, 537 F.2d 549, 190
USPQ 461, 463 (CCPA 1976). We interpret "ingredients that . .
. materially affect" as only being directed to elements that
materially affect in a deleterious manner. The issue,
therefore, is whether the intermediate layer of Miyamoto
with particles having an average diameter of 0.2 µm or lower
would materially and detrimentally affect the basic and novel
properties of the invention.
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