Appeal No. 2005-0515
Application No. 10/124,925
characteristics of the here claimed composition and therefore is
excluded by the claim 1 language “consists essentially of.” It
is undisputed that the appellants have proffered no such proof on
the record before us, and accordingly the examiner considers
claim 1 to not exclude patentee’s rhenium ingredient.
In response, the appellants argue that the Bartley reference
itself evinces that rhenium would effect the basic and novel
characteristics of patentee’s composition. The deficiency of
this argument stems from the fact that the appellants have
misfocused the relevant inquiry. The question here is whether
rhenium would affect the basic and novel characteristics of the
appellants’ catalyst not Bartley’s catalyst. See Id.
In addition, the appellants disagree with the examiner’s
basic position that it is their burden to show that the rhenium
of patentee’s catalyst is excluded by the “consists essentially
of” language of claim 1. However, the appellants are plainly
incorrect on this matter. The placement of this burden on an
applicant is well settled. See PPG, 156 F.3d at 1355, 48 USPQ2d
at 1355; Herz, 537 F.2d at 551-52, 190 USPQ at 463; De LaJarte,
337 F.2d at 873-74, 143 USPQ at 258; Janakirama-Rao, 317 F.2d at
954, 137 USPQ at 896. Moreover, the fairness of so allocating
this burden is evidenced by the inability of the Patent and
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