Appeal No. 2002-2063
Application No. 09/635,093
therefore suggests this claim limitation as well.
Next, the appellants urge that the claims are limited to a
two-component binder system and that Furness does not teach a two-
component binder system. (Appeal Brief, page 10, lines 15-31).
While we agree that the claims are overall limited to a two-
component binder system, we first note that the claims are
directed to the final binder composition, and as such can be met
by a prior art composition which suggests every element of the
composition.
Furthermore, as discussed above, the claim is written in
“consisting essentially of” language. 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 composition is excluded from his
claims by "consisting essentially of" language. See In re Herz,
supra, 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
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