Appeal No. 2004-1584
Application No. 09/067,746
(BPAI 1989). The term "consisting essentially of" does not
mean, "consisting solely of". Ex parte Appeldorn, 159 USPQ 791
(Bd.App. 1967); Ziegler v. Phillips Petroleum Co., 483 F.2d 858,
878, 177 USPQ 481, 494 (5th Cir. 1973), cert. denied, 414 U.S.
1079 (1973). The phrase "consisting essentially of" does not
necessarily limit the claims so as to exclude other things when
the specification clearly indicates other constituents may be
present. Ex parte Boukidis, 154 USPQ 444, (Bd. App. 1966).
If the claims were product claims, the phrase “consisting
essentially of” excludes ingredients which would materially
affect the basic and novel characteristics of the product
defined in the claims. In the case of a product claim, the
phrase "consisting essentially of" excludes ingredients which
would affect the basic and novel characteristics of the product
defined in the claim. In re Garnero, 412 F.2d 276, 279, 162
USPQ 221, 223 (CCPA 1969); Ex parte Hutchins, 157 USPQ 167, 168
(Bd.App. 1967); Ex parte Shepherd, 185 USPQ 480, 484 (Bd.App.
1974).
In summary, therefore, with regard to process claims, the
phrase “consisting essentially of” does not limit the claim to
only the steps specifically recited in the claim. In the
context of a product claim, the law provides that this phrase
can exclude ingredients which would materially affect the basic
and novel characteristics of the product defined in the claims.
In the instant case, the claims are directed to a process,
and the specification does disclose that a sealing membrane may
be formed on the negative electrode. See page 17, lines 22-24
of the specification. Hence, we disagree with the examiner’s
reasoning and conclusion with regard to the phrase “consisting
essentially of”, in view of the case law discussed above.
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