Ex parte JOHNSON - Page 9

              Appeal No. 1997-2565                                                                                           
              Application 08/382,588                                                                                         

              characteristics of a claimed composition.  See In re Janakirama-Rao, 317 F.2d 951, 954,                        
              137 USPQ 893, 895, 896 (CCPA 1963).   We therefore need to determine the “basic and                            
              novel characteristics” of the claimed invention.  In so doing, the claims should be analyzed                   
              to determine their plain meaning in light of the specification.  See In re Marosi, 710 F.2d                    
              799, 803, 218 USPQ 289, 291-293 (C.A.F.C. 1983).  In the instant case, the beverage is                         
              described as having a “distinctive taste” with “novel flavor and taste characteristics” (p. 1,                 
              para. 1) without added sugar or other flavoring (p. 2, para. 1).  The appellant indicates that                 
              the beverage is to be distinguished from other commercially available products which are                       
              combinations of high fructose, corn syrup, artificial flavorings, and water, with only minimum                 
              amounts of fruit and vegetable juices in their pure form (p. 1, para. 2, through p. 3, para. 1).               
              As explained by the appellant in the paragraph bridging pp. 3 and 4 of his Reply Brief, the                    
              “beverage, as claimed, is essentially limited to orange juice and tomato juice made from                       
              concentrates and has a mild, but pleasant and distinct taste.”   In our view, when the claims                  
              on appeal are read in light of the specification, the phrase “consisting essentially of” in the                
              present claims excludes the sugar and mint leaves taught by Tarr.                                              
                      The examiner has not provided any teaching or suggestion in the prior art to omit                      

                      See also, PPG Industries Inc. v. Guardian Industries Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-13545                                                                                                     
              (C.A.F.C. 1998), wherein the Federal Circuit noted that by using the term “consisting essentially of” the claim drafter
              signals that the invention necessarily includes the listed ingredients and is open to unlisted ingredients that do not
              materially affect the basic and novel properties of the invention.                                             
                      At least some of the claims also provide for one or more of ascorbic acid, preservatives, soda water, and6                                                                                                     
              mineral water.                                                                                                 

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