Appeal No. 2005-0515
Application No. 10/124,925
Trademark Office to obtain and compare prior art catalysts with
and without the ingredient argued by an applicant to be excluded
by his “consists essentially of” language. Compare In re Best,
562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
For these reasons alone, based on the record before us on
this appeal, it is proper to interpret appealed independent claim
1 as not excluding the rhenium of Bartley by virtue of the claim
language “consists essentially of.”
However, the examiner has advanced another reason for
interpreting this claim as including rather than excluding
rhenium. More particularly, the examiner argues that rhenium is
included by the term “comprising” in the claim 1 language “the
improvement comprising the further inclusion of tin in said
catalyst.” This argument is well taken since the term
“comprising” has long been interpreted as including ingredients
other than those recited in a claim. See In re Baxter, 656 F.2d
679, 686, 210 USPQ 795, 802 (CCPA 1981). Also see Berenter v.
Quigg, 737 F.Supp. 5, 6-7, 14 USPQ2d 1175, 1176 (D.D.C. Oct. 31,
1988). Moreover, it is significant and noteworthy that the
appellants have proffered no rebuttal whatsoever to this well
taken argument. Compare the first paragraph on page 6 of the
answer with the reply brief in its entirety.
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