Appeal No. 1999-0610 Page 6
Application No. 08/601,186
language "comprising." The examiner points out that, in view
of the use of the language "comprising," the polymer or
oligomer need not consist essentially of monomers of
polysaccharides; rather, the polymer or oligomer may contain
other unclaimed elements (answer, page 3).
While we appreciate the examiner's position that the
polymer need not consist essentially of monomers of
polysaccharides, but, rather, may contain other unspecified
elements, we do not agree that this renders claim 49, or any
of the claims depending therefrom, indefinite. As pointed out
by appellants (brief, page 8), "consisting essentially of" is
directed to the coating, while "comprising" is directed to the
polymer or oligomer. In other words, the claimed coating is
limited to a lubricity-causing polymer or oligomer and other
materials that do not materially affect the basic and novel
characteristics of the claimed coating ; however, that4
lubricity-causing polymer or oligomer may also contain other
components in addition to the monomers of
4See In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976).
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