Appeal No. 2003-1625
Application No. 09/341,669
at the paragraph bridging pages 2 and 3, the paragraph bridging
pages 5 and 6 and examples 9-10 as well as Numrich at the
abstract, lines 14-64 in column 3 and the paragraph bridging
columns 7 and 8. Viewed from this perspective, the Wanat and
Numrich references evince that the core/shell polymer particles
thereof do not materially affect the basic and novel
characteristics of molding compositions of the type under review.
Rather, these core/shell polymer particles are consistent with
the basic and novel characteristics of such molding compositions.
It follows that, on the record before us, the claim language
“consisting essentially of” cannot be regarded as excluding the
core/shell polymer particles of either Wanat or Numrich.
Particularly with this last mentioned point in mind, we
consider it appropriate to reiterate the examiner’s view that it
is the appellants’ burden to establish that these prior art
core/shell polymer particles are excluded from the claims under
consideration by virtue of the claim language “consisting
essentially of.” The appellants apparent belief that they have
no such burden is erroneous. See Herz, 537 F.2d at 551-52, 190
USPQ at 463; In re De Lajarte, 337 F.2d 870, 873-74, 143 USPQ
256, 258 (CCPA 1964); and Ex parte Hoffman, 12 USPQ2d 1061, 1064
(Bd. Pat. App. & Int. 1989).
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