Appeal No. 2004-1584
Application No. 09/067,746
On page 2 of the answer, the examiner indicates that the
35 U.S.C. § 103 rejection of claims 36-45 and 48-57 as obvious
over Ito in view of Patel, Chakrabarti, Tokailin, Shimizu and
Tsou, has been withdrawn.
On page 3 of the brief, appellants state that claims 36-45
and 48-57 stand or fall together under the 35 U.S.C. § 103
rejection. We therefore consider claim 36 in this appeal.
Appellants also state that claims 43-44 and 55-56 stand or fall
together under the 35 U.S.C. § 112, second paragraph, rejection.
OPINION
We have carefully reviewed appellants’ brief and reply
brief, the answer, and the applied references. This review has
led us to conclude that each of the rejections is not well
founded.
I. The 35 U.S.C. § 112, second paragraph (indefiniteness)
rejection
The examiner’s position regarding this rejection is set
forth on pages 5-6 of the answer. The examiner indicates that
independent claim 48 uses the closed language of “consisting
essentially of”, and states that such language “is accepted as
excluding any further steps which materially affect the
process.” The examiner states that dependent claims 43-44 and
55-56 require the further step of forming a sealing membrane
which would affect the process, and therefore, these claims
contradict “two mutually exclusive limitations”. Answer, page
6.
The use of the phrase “consisting essentially of” in a
process claim does not limit the claim to only those steps
recited in the claim. Ex parte Hoffman, 12 USPQ2d 1061, 1063
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