Appeal No. 97-2089
Application No. 08/097,801
invention disclosed by the applied prior art. Thus, whether
claim 13 by virtue of its “consisting essentially of” language
is open to unspecified ingredients or steps depends upon
whether such ingredients or steps would materially affect the
basic and novel characteristics of the here claimed method
rather than the antifoaming method/composition of Alexander.
In addition, we here emphasize that it is an applicant’s
burden to show that the basic and novel characteristics of his
claimed invention would be materially affected by an
ingredient or step of the prior art. In re De Lajarte, 337
F.2d 870, 874, 143 USPQ 256, 258 (CCPA 1964); Ex parte
Hoffman, id. On the record before us, the appellants have not
even alleged, much less carried their burden of showing, that
the basic and novel characteristics of the invention defined
by appealed claim 13 would be materially affected by any
aspect of Alexander’s antifoaming method/composition. For
this reason, we cannot agree with the appellants’ viewpoint
that claim 13 by virtue of its “consisting essentially of”
language distinguishes over Alexander.
As a consequence, we will also sustain the examiner’s
section 103 rejection of claims 13 through 15 as being
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