Appeal No. 2002-1644 Page 10
Application No. 08/602,498
the stability of the compositions of the present invention cannot be
solely attributed to the amount of propylene glycol in the
composition, because the composition of Example 3 modified to
contain 60% propylene glycol froze at 0°F, while a composition of
the present invention having 60% propylene glycol will not freeze at
0°F.
It is well settled that “[t]he word ‘essentially’ [in ‘consisting essentially of’]
opens the claims to the inclusion of ingredients which would not materially affect
the basic and novel characteristics of appellant's compositions as defined in the
balance of the claim.” In re Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ
893, 896 (CCPA 1963) (emphasis in original). In our opinion, the Meisters
Declaration demonstrates that Kabara includes ingredients that affect the basic
and novel characteristics of appellants’ composition, and thereby would affect
the claimed method of using the composition. Therefore, we cannot agree with
the examiner’s position (Answer, page 5), “there is no preclusion of the fatty
ester, as appellant [sic] claims.”
For the foregoing reasons we reverse the rejection of claims 14-16 under
35 U.S.C. § 103 as being unpatentable over Kabara.
Claim 21:
Claim 21 stands on a different footing, in that it does not use the
transitional phrase “consisting essentially of”, but instead uses the transitional
term “comprising”. Accordingly, we are not persuaded by the Meister
declaration, particularly since there is no limitation in the claimed method
regarding the compositions performance at 0°F. Similarly, the evidence of
commercial success set forth in the Wilkins Declaration does not persuade us.
According to Wilkins (Wilkins Declaration, paragraph 4), the composition is
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