Appeal No. 2001-0030
Application No. 08/685,680
to unlisted ingredients that do not materially affect the basic and novel properties or
characteristics of the claimed invention. PPG Industries, Inc. v. Guardian Industries
Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998).
With this legal premise in mind, we have carefully considered the appellants’
arguments that the appealed claims exclude the prior art ingredients used in the
primary reference golf ball cores. However, this argument is not well taken for the
reasons thoroughly detailed by the examiner in his answer. We add the following
comments for emphasis and completeness.
As correctly indicated by the examiner, many if not most of the ingredients said
by the appellants to be excluded from their claims are expressly disclosed in the
specification as ingredients which may be included in their golf ball core composition.
For example, it is argued that the claim 1 “consisting essentially of” language excludes
the stearic acid and sulfur of Kamata (see pages 9-10 of the brief), the zinc stearate
of Sullivan ‘060 (see page 11 of the brief) and the zinc oxide of Sullivan ‘637 (see
page 2 of the supplemental brief). Because each of the aforementioned ingredients
is expressly disclosed in the subject specification (see pages 5 and 6) as possible
additives to their golf ball core composition, the appellants are in no position to urge
that these ingredients are excluded by the claim 1 phrase “consisting essentially of”. In
re Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893, 895-96 (CCPA 1963).
Analogous reasoning applies to the isocyanate ingredient of the Molitor and
Sullivan ‘637 golf ball cores which the appellants again argue is excluded by the
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