Appeal No. 2005-0537
Application No. 08/925,985 Page 10
material, 99.999 weight percent of which comprises aluminum free
from an adulterant. Then, we would need to assess what materials
would be considered adulterants in the context of the claimed
subject matter. Of course, that would also require some
speculation because a list of adulterants has not been furnished
by appellants in their specification.5 The need for such
speculation upon speculation in assessing the scope of the claims
underscores the indefiniteness thereof.
Concerning our new ground of rejection of claims 26-28 and
32, pursuant to 37 CFR § 41.50(b), as failing to comply with the
second paragraph of 35 U.S.C. § 112 on this record, we agree with
the examiner and appellants that the transitional phrase
“consisting essentially of” as employed in those claims limits
those claims to an upper surface that is made of aluminum alone
or together with any other material that does not materially
effect the basic and novel characteristics of the aluminum-
containing upper surface. Turning to appellants’ specification
for guidance so as to determine what those basic and novel
characteristics are, we find that appellants describe the
5 See, e.g., the various definitions of “adulterate,”
“metallic” and “pure” at pages 17 and 764 and 983 of The American
College Dictionary (1970).
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