Appeal No. 1999-2119
Application No. 08/815,410
this claim language to exclude such disulfones. We agree with
the examiner.
As both the appellants and the examiner seem to appreciate,
the claim phrase “consisting essentially of” limits the scope of
a claim to the specified ingredients and those that do not
materially affect the basic and novel characteristics of the
claimed composition. In re Janakirama-Rao, 317 F.2d 951, 954,
137 USPQ 893, 896 (CCPA 1963). Moreover, under circumstances of
the type here in question, it is appropriate that an applicant
carry the burden of providing evidence in support of his argument
that a prior art ingredient affects the basic and novel
characteristics of his claimed composition and thus is excluded
by his “consisting essentially of” claim language. In re De
Lajarte, 337 F.2d 870, 874, 43 USPQ 256, 258 (CCPA 1964); also
see In re Herz, 537 F.2d 549, 551, 190 USPQ 461, 463 (CCPA 1976).
In an apparent attempt to carry this burden, the appellants
proffer the § 1.132 declaration of record by Watanabe, executed
July 5, 1996, wherein inventive resist materials with and without
disulfone were compared. According to the appellants, the
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