Appeal No. 1997-0461
Application 08/267,683
amended in Paper Number 5 to recite the language "consisting
essentially of" rather than "comprising". Nevertheless, use of
the terminology "consisting essentially of" has been held to
exclude only those ingredients which would materially affect
the basic and novel characteristics of a composition. In re
Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893, 896 (CCPA
1963). Moreover, in construing the language "consisting
essentially of", it is necessary to determine whether
appellant's specification reasonably supports a construction
which would include other additives. In re Herz, 537 F.2d 549,
551 [1,2], 190 USPQ 461, 463 [1] (CCPA 1976). Thus, in our
role as fact finders, the Board must look to appellant's
disclosure to determine what ingredients, if any, are excluded
by the use of the phrase "consisting essentially of".
In Janakirama-Rao at 317 F.2d 954, 137 USPQ 896, the
court specifically noted that:
[t]he word "essentially" opens the claims to the
inclusion of ingredients which would not materially
affect the basic and novel characteristics of
appellant's compositions as defined in the balance
of the claim, according to the applicable law.
[emphasis on "balance" added]
Further, in discussing Herz's specification with respect to
Herz's composition's novel antioxidant properties vis-à-vis
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