Ex Parte KISSINGER - Page 9




                        [3]  subequently further cooling the solution                                    
            containing nucleated diaryl carbonate at a controlled rate,                                  
            between about 0.01 to 1.0°C per minute whereby crystals of the                               
            diaryl carbonate form in a residue of cooled solution;                                       
                        [4] separating the residue of cooled solution from the                           
                  formed crystals of the diaryl carbonate;                                               
                        [5] heating the separated crystals at a controlled                               
                  rate to their melt temperature, incrementally;                                         
                        [6] separating sweat exuding from the heated crystals                            
                  in each increment; and                                                                 
                        [7] collecting the melted crystals to obtain high                                
                  purity diaryl carbonate.                                                               
                  The phrase "consisting of" is a transition phrase commonly                             
            used in claims to signal a closed claim, 15 and in the case of                               
            our suggested claim to signal closing only one clause of a                                   
            multi-clause claim.  Cf. (1), Manual of Patent Examining                                     
            Procedure, § 2111.03 (8th ed. Aug. 2001), (2) Mannesmann Demag                               
            Corp. v. Engineered Metal Products Co., Inc. , 793 F.2d 1279,                                
            1282, 230 USPQ 45, 46 (Fed. Cir. 1986) ("consisting" within                                  
            element (a) of a claims with elements (a) through (d) limited                                
            only element (a); the district court correctly observed that the                             
            phrase "consisting of" appears in clause (a), not the preamble of                            
            the claim and thus limits only the element set forth in clause                               
            (a) and (3) Berenter v. Quigg, 737 F.Supp. 5, 14 USPQ2d 1175                                 
            (D.D.C. 1988) (claim with "comprising" in preamble and                                       
            "consisting of" in one step; step limited because of consisting                              


            15   Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) ("consisting of"                       
            closes the claim to inclusion of materials other than those recited except                   
            for impurities ordinarily associated therewith).                                             
                                                 - 9 -                                                   





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  Next 

Last modified: November 3, 2007