Appeal No. 97-2089
Application No. 08/097,801
through 21 as being unpatentable over Alexander must be
sustained.
As for method claims 13 through 15, the appellants seem
to understand that the “consisting essentially of” language of
these claims is open only for the inclusion of unspecified
ingredients or steps which do not materially affect the basic
and novel characteristics of the composition or method. In re
Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893, 896 (CCPA
1963); Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (Bd. Pat.
App. & Int. 1989). It appears to be the appellants’
fundamental position that the “consisting essentially of”
language of claim 13 distinguishes over the antifoaming
method/composition of Alexander because “the patentee expounds
on the necessity of each and every ‘component ingredient’ in
the patented invention” (brief, page 3).
The appellants’ position is not well taken because it is
premised upon a misapplication of the “materially-affect” test
which relates to the claim language under consideration.
Contrary to the appellants’ misconception, the analysis of
whether an affect is material concerns the invention (e.g., a
composition or a method) claimed by an applicant and not the
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