Appeal No. 1997-1685
Application 08/348,236
excludes the coated mica of the prior art (emphasis added). While the examiner
recognizes and accepts that the coatings of the mica are not elastic (Answer, page 10,
paragraph 1), he maintains his position arguing that the coatings would not alter the
molecular structure of the mica, rending them inelastic.
We are not persuaded by the examiner’s argument because the examiner
failed to provide any evidence in support of his argument. We also are not persuaded
because the examiner failed to appreciate the meaning of the term “consists of” used to
define applicants chemically inert, elastic inorganic substance. The term “consists of” or
“consisting of” are terms of art in patent law. The presence of “consists of” in a
composition claim closes the claim to the inclusion of materials other than those recited
4
except for impurities ordinarily associated therewith. Hence, the use of the term
“consists of” in claim 11 limits or closes the claims to mica flakes except for impurities.
Yamazaki and Diefenbach specifically teach the use of coated mica flakes. On this
record, the examiner has failed to establish that the coating is an impurity and that the
coating would not render the coated mica platelets inelastic.
The rejection of the claims over Diefenbach fails for an additional reason.
As noted earlier, claim 11 recites three ingredients and the examiner failed to explain how
4 See Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) where the terms
“comprising”, “consisting” and “consisting essentially of” were first “defined” in a published
opinion.
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