Appeal No. 1996-1372
Application No. 08/003,659
[i]f required, the resin composition of the present invention may contain a
variety of additives such as a stabilizer (e.g. epoxy compounds), an antioxidant (e.g.
phenol compounds, phosphite compounds), an ultraviolet absorber (benzophenone
compounds, benzotriazole compounds), a neutralizer, a nucleatig [sic] agent, an
antistatic agent, an antiblocking agent, a lubricant (e.g. aliphatic hydrocarbons, higher
fatty acids, and the alkali metal salts or alkaline earth metal salts thereof, fatty acid
esters, higher fatty acid amides, rosin derivatives), a colorant, an elastomer, and a
mineral (e.g. talc, hydrotalcite), each within a range not interfering with the effect of the
invention. [Paragraph bridging pages 25-26.]
Reviewing the prosecution history, we find that appellants have stated that “[i]t is not seen how a
reference directed to a polyphenylene ether composition and not mentioning ß-form crystalline
polypropylene can render obvious a composition not containing a polyphenol ether ...” (brief,
sentence bridging pages 6-7, emphasis added). We find nothing erroneous in appellants’ remark.
Hence, in this particular case, the limitation “consisting essentially of” excludes the possibility of
polyphenylene ether being present in the claimed composition.
Finally, absent evidence in the record to indicate that the resin composition disclosed by
Shibuya would be expected to have an increased proportion of ß-form crystals, we can find no
justification for placing the burden on appellants to conduct experiments to determine the ß-form crystal
properties of the resin disclosed by Shibuya. In re De Lajarte, 337 F.2d 870, 873-874, 143 USPQ
256, 258 (CCPA 1964).
Thus, we reverse the examiner’s rejection of claims 1-10 under 35 U.S.C. § 103.
II. Method claims
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