Appeal No. 1997-4318
Application 08/469,806
We have considered appellants’ argument, advanced at hearing, that our interpretation is
precluded by the phrase “consisting essentially of” which appears as a transitional phrase in the
preamble of claim 26, and in the second of several limitations defining the “microgranulates of pigments”
in claim 13 wherein the subject limitation is the first of these limitations. We cannot agree with
appellants because, in each instance, the limitation is expressly stated in a manner which clearly permits
the presence of “organic liquefiers” and thus the inclusion of such ingredients is not a manner of whether
they are excluded by the phrase “consisting essentially of” because they materially affect the basic and
novel characteristics of the microgranulates.
We interpret the phrase “boron, aluminum, silicon, titanium, zinc and tin compounds” in light of
the plain claim language “calculated as oxide” and the disclosure at page 4, lines 2-10, of the
specification, to include any matter of oxide compounds of these elements and any manner of organic
compound derived from each of these elements which would give rise to such oxide compounds.
Accordingly, contrary to appellants’ arguments, the appealed claims read on microgranulate
pigment compositions containing organic compounds and methods of using such compositions.
Turning now to the ground of rejection advanced by the examiner on appeal, we initially find
that the record of before us is materially different from the record in Appeal No. 93-3107 (see above
note 1) and therefore the finding of a prima facie case of obviousness in the prior decision does not
carry forward (see answer, page 8 first paragraph, and page 15), thus requiring the examiner to make
out a separate prima facie case on the current record. See In re Rinehart, 531 F.2d 1048, 1051,
189 USPQ 143, 147 (CCPA 1976) ( “The Board erred in adopting the earlier opinion. The basis for
evaluation and for decision had changed. The present board had before it not only the application and
the prior art but all of the unrebutted facts established in Rinehart’s affidavit. At that stage no question of
prima facie obviousness remains. The appealed claims must be reconsidered in the light of all of the
evidence, and the resultant finding, that the claimed invention would or would not have been obvious, is
to be made in such light.”). We find that there are a number of differences between the present and
prior appealed claims, e.g., the Markush grouping of inorganic pigments and the smaller weight percent
range of the “one or more boron, aluminum, silicon, titanium, zinc and tin compounds,” and the
requirements that the microgranulates are “sufficiently unstable to shearing forces such that they break
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