Appeal No. 2001-0233
Application 08/668,640
novel properties of the invention. A "consisting essentially of" claim occupies a middle
ground between closed claims that are written in a "consisting of" format and fully open
claims that are drafted in a "comprising" format. PPG Indus. v. Guardian Indus. Corp.,
156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998) citing Ex parte Davis,
80 USPQ 448, 449-50 (Pat. Off. Bd. App. 1948); Manual of Patent Examining
Procedure § 2111.03 (6th ed. 1997).
To determine the components included versus excluded by this language, the
claim must be read in light of the specification. In re Janakirama-Rao, 317 F.2d 951,
954, 137 USPQ 893, 896 (CCPA 1963); In re Herz, 537 F.2d 549, 551, 190 USPQ 461,
463 (CCPA 1976). In this regard, we emphasize that, from our perspective, it is an
applicant's burden to establish that a component in a prior art method is excluded from
his claims by "consisting essentially of" language. See Id., 537 F.2d at 551-552, 190
USPQ at 463 ("[A]n applicant who has not clearly limited his claims is in a weak position
to assert a narrow construction" and "[t]here is no evidence that . . . [the prior art]
dispersant would materially affect the basic and novel characteristic of . . . [the claimed]
composition"). Also see Ziegler v. Phillips Petroleum Co., 483 F.2d 858, 878, 177 USPQ
481, 494 (5th Cir.), cert. denied, 414 U.S. 1079 (1973) ("In the absence of any evidence
that a third component was being excluded by the 'essentially consisting of' language,
we cannot read those words as meaning 'consisting solely of' or 'consisting exclusively
of'").
The specification permits, indeed prefers, silicon containing polymers including
polysilazanes (Specification, page 5, lines 16-22). Other silicon containing polymers are
exemplified at page 2, last paragraph, of the specification. There is no evidence of
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