Appeal No. 2005-0515
Application No. 10/124,925
The pivotal issue in this appeal is whether appealed claim
1 excludes the rhenium present in the catalyst composition of
Bartley. The examiner argues that rhenium is not excluded by
this claim and therefore does not propose any modification to
patentee’s composition vis-á-vis the absence versus presence of
rhenium. In support of her interpretation of claim 1, the
examiner advances a number of rationales.
In the first place, the examiner points out that the claim
1 phrase “consists essentially of” excludes only those
ingredients which would materially affect the basic and novel
characteristics or properties of the appellants’ claimed catalyst
composition. This is, of course, correct. See PPG Indus. v.
Guardian Indus., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54
(Fed. Cir. 1998); Atlas Powder Co. v. E.I. Dupont de Nemours &
Co., 750 F.2d 1569, 1574, 224 USPQ 409, 411-12 (Fed. Cir.
1984); In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463
(CCPA 1976); In re De LaJarte, 337 F.2d 870, 873-74, 143 USPQ
256, 258 (CCPA 1964); In re Janakirama-Rao, 317 F.2d 951, 954,
137 USPQ 893, 896 (CCPA 1963). The examiner also
points out that it is the appellants’ burden to establish
that the rhenium ingredient of Bartley’s catalyst composition,
in fact, would materially affect the basic and novel
3
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