Appeal No. 2004-0109
Application 09/324,549
“balance” or amount of aluminum present is based on the amounts of the specified elements and
any other elements present in the alloy. 2
The transitional term “consisting essentially of” appearing in appealed claim 19 is used in
claim construction to indicate that “the invention necessarily includes the listed ingredients and is
open to unlisted ingredients that do not materially affect the basic and novel properties of the
invention.” PPG Indus., Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351,
1353-54 (Fed. Cir. 1998). Thus, the interpretation of this transitional term requires a
determination of whether the inclusion in the claimed compositions additional element(s) in the
amount(s) taught in the applied prior art would materially affect the basic and novel
characteristics of the claimed composition, because this phrase customarily excludes such
materials. See Herz, supra (explaining Ex parte Davis, 80 USPQ 448 (Pat. Off. Bd. App. 1948)).
In arriving at this determination, the written description of the written description in appellants’
specification must be considered. Herz; supra (“[I]t is necessary and proper to determine
whether [the] specification reasonably supports a construction” that would exclude or include
particular ingredients.); see also PPG Indus., 156 F.3d at 1354-57, 48 USPQ2d at 1353-56
(Patentees “could have defined the scope of the phrase ‘consisting essentially of’ for purposes of
its patent by making clear in its specification what it regarded as constituting a material change in
the basic and novel characteristics of the invention. The question for our decision is whether PPG
did so.”).
Our review of the written description in the specification reveals that certain elements,
2 The matter of the amount of aluminum raises issues under 35 U.S.C. § 112, second paragraph,
with respect to appealed claim 19 because, even upon considering the interpretation of the claim
language in light of the written description in the specification, and we will not read such a
limitation into the claim, the same is, at best, indefinite with respect to the embodiments
encompassed. However, in order to resolve prior art issues in this appeal, thus avoiding
piecemeal prosecution, we use the reasonable, conditional interpretation of the claim language
stated above. Cf. In re Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962); Ex parte
Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. & Int. 1993). We decline to exercise our
authority under 37 CFR § 1.196(b) (2003) and enter on the record a new ground of rejection of
the appealed claim 19 and claims dependent thereon with respect to this issue, leaving it to the
examiner to address the same upon any further examination of the appealed claims before the
examiner.
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