Appeal No. 1996-3826
Application 08/222,477
diversity no further limitation(s) of the claimed aqueous fuels other than those specified in claim 1, and
claims dependent thereon, or of the claimed method for making such fuels other than those specified in
claim 13, and method and product-by-process claims dependent thereon.
Furthermore, the transitional term “comprising” in claims 1, 13 and 36 open these claims to
include at least the ingredients specified in claim 1 and the method steps and conditions specified in
claims 13 and 36, see Exxon Chemical Patents Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555, 35
USPQ2d 1801, 1802 (Fed. Cir. 1995) (“The claimed composition is defined as comprising - meaning
containing at least - five specific ingredients.”); In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795,
802-03 (CCPA 1981) (“As long as one of the monomers in the reaction is propylene, any other
monomer may be present, because the term ‘comprises’ permits the inclusion of other steps, elements,
or materials.”). The transitional term “consisting essentially of” in claim 2 would exclude other
ingredients to the extent that such materials are shown in the specification to cause a material change in
the basic and novel characteristics of the invention as claims. See PPG Industries Inc. v. Guardian
Indus. Corp., 156 F.3d 1351, 1354-57, 48 USPQ2d 1351, 1353-56 (Fed. Cir. 1998); In re Herz,
537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976); Ex parte Boukidis, 154 USPQ 444
(Bd. App. 1966). The use of the term “comprising” in the body of claim 2 would, in this instance,
reasonably appear to further indicate that the claimed aqueous fuel can contain any “lubricity enhancer”
and any “additive to improve resistance to phase separation at temperatures above about 170°C,” while
the phrase “group consisting of” limits the claims to the specified carbonaceous fuels. Also, as pointed
out by the examiner (Office action mailed June 1, 1995 (Paper No. 11; page 5)), in claim 24, and thus
in claim 32 dependent thereon, the phrase “up to” is used in specifying the amount of dihydroxyethyl
tallow glycinate that may be used as an “additive to improve resistance to phase separation at
temperatures above about 170°C.” in the method of claim 17 on which it depends, which amount as
stated is customarily interpreted as a specified amount that includes “zero.” See In re Mochel, 470
F.2d 638, 640, 176 USPQ 194, 195 (CCPA 1972).
Turning now to consideration of the grounds of rejection advanced on appeal, the threshold
issue in applying the applied prior art to the appealed claims as we have interpreted them above, is
whether Kawaai, used in all of the grounds of rejection, would have reasonably disclosed oil-in-water
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