Appeal No. 2000-2179
Application No. 09/235,242
that claimed, in the process of O’Lenick.
The appellants take the position that the phrase “consists
essentially of” recited in claim 6 excludes the presence of the
free radical inhibitor described in O’Lenick. We do not
subscribe to this position.
It is well settled that the phrase “consists essentially of”
renders a claim of the type under consideration open to unrecited
components which do not materially affect the basic and novel
characteristics of the claimed invention. See PPG Indus. v.
Guardian Indus. Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-
54 (Fed. Cir. 1998). The burden is on the appellants to
demonstrate that the basic and novel characteristics of the
claimed invention would be materially affected by the presence of
the free radical inhibitor described by O’Lenick. See In re De
Lajarte, 337 F.2d 870, 874, 143 USPQ 256, 258 (CCPA 1964). The
appellants, however, fail to carry that burden. In fact, it can
be inferred from O’Lenick that the claimed process is not
materially affected by the presence of a beneficial free radical
inhibitor. Compare In re Herz, 537 F.2d 549, 551-52, 190 USPQ
461, 463 (CCPA 1976).
7
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