Appeal No. 2001-0233
Application 08/668,640
area and volume depends upon, inter alia, mean particle size (Specification, page 8,
line 14), relative amounts of ceramic precursor and particulate material (Specification,
page 9, lines 6-9), and final heating temperature (Specification, page 12, lines 19-23).
Thus, any mixture which meets the claimed mixture elements is deemed “capable of”
forming an end product having the recited properties.
The Appellants next correctly note that Takeda regards the silazane component
as “essential” to the invention. (Appeal Brief, page 20, lines 19 - 24). However, we
remind the appellants that all of the disclosures of a prior art reference, including non-
preferred embodiments, must be considered for what they fairly teach one of ordinary
skill in the art. Merck & Co. Inc. v. Biocraft Labs. Inc., 874 F.2d 804, 807, 10 USPQ2d
1843, 1846 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). Takeda explicitly teaches
that less than 5% by weight of the silazane would sometimes fail to provide electrical
insulation (column 6, lines 50 - 52) and the composition preferably contains from 5-40%
by weight silazane (column 6, lines 47-48). These statements, while preferring the
presence of silazane, do not teach its mandatory presence. We note that comparative
Examples 1 and 2 (see column 10) clearly evidence the absence of silazane for the
purposes of comparison, producing functional, if not preferred compositions.
Additionally, the Appellants assert that claim 1 is written in “consisting essentially
of” language and therefore excludes an organic silicon polymer. (Reply Brief, page 2,
lines 6-10). Typically, "consisting essentially of" precedes a list of ingredients in a
composition claim or a series of steps in a process claim. By using the term "consisting
essentially of," the drafter signals that the invention necessarily includes the listed
ingredients and is open to unlisted ingredients that do not materially affect the basic and
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