Ex parte YUAN - Page 7




          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--vis                  
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