Appeal No. 1997-2593
Application No. 08/160,290
that the claim language in question, "a positive resist
composition", at best, merely sets forth an intended future
use of appellants’ composition, and thus does not distinguish
the claimed composition from the positive acting
photosensitive composition disclosed by Liu. See In re
Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974).
Appellants further argue that the "main" components of
Liu’s exemplified "(-butyrolactone and diacetone alcohol
solvent blend" are propylene glycol monomethyl ether and
methyl ethyl ketone, and that the latter two solvents are
excluded from the claimed solvent blend component of
appellants’ composition by the "consisting essentially of"
language. However, the examiner correctly points out that the
claim language "consisting essentially of" limits the scope of
appellants’ solvent blend to the specified solvents and those
that do not materially affect the novel and basic
characteristics of the solvent blend. Here, appellants have
presented no objective evidence that the "main" solvents of
Liu’s solvent blend would materially affect the basic and
novel characteristics of the claimed solvent blend when added
thereto. See In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461,
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