Appeal No. 1998-1671 4
Application No. 08/481,186
Therefore, to the extent that components (a) or (b) are present, the additional presence of
water in Albanese does not come within the purview of being a solvent for these
components since water does not function as a solvent for oil, i.e., water and oil do not
mix. Neither does water function as a solvent for fluorocarbon polymers which are
hydrophobic. Accordingly, water is not a solvent for any of components (a), (b), or (c).
Finally, even if water were to come within the scope of component (c), the
transitional language “consisting essentially of” would not preclude the presence of water as
a solvent, it being well-settled that the term "consisting essentially of" includes not only
what is specifically recited in appellants’ claim, but also any other materials which do not
materially affect the basic and novel characteristics of the claimed composition. See PPG
Indus., Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351,
1353-54 (Fed. Cir. 1998); In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463
(CCPA 1976); In re De Lajarte, 337 F.2d 870, 873-74, 143 USPQ 256, 258 (CCPA
1964); In re Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893, 896 (CCPA
1963). Based upon the disclosure and teachings of Albanese the presence of water does
not materially affect the composition.
As for the request by the appellants that, “the Decision on Appeal be vacated and a
new decision by [sic, be] issued based on the combination of the references cited by the
examiner,” be entered, Request, page 6, we have neither reversed nor vacated the decision
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