Appeal No. 2005-1459
Application No. 09/950,612
3). Claim 1 stands rejected under 35 U.S.C. § 102(b) as
anticipated by Robinson (Answer, page 4). Claims 2-6 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Robinson
(Answer, page 5).
Based on the totality of the record, we affirm the
examiner’s rejections based on sections 102(b) and 103(a)
essentially for the reasons stated in the Answer and those
reasons set forth below. We reverse the examiner’s rejection
based on section 112, second paragraph, for the reasons stated in
the Brief, the Reply Brief and those reasons set forth below.
Accordingly, the decision of the examiner is affirmed.
OPINION
A. The Rejection based on Section 112, Paragraph 2
The examiner states that the use of “slurry consists
essentially only” in claim 1 on appeal is indefinite “because it
is unclear how a slurry lacks a dispersing agent such as a liquid
solvent” (Answer, page 3). The examiner maintains that the
phrase “consisting essentially of” restricts the composition to
the elements listed after the phrase (Answer, page 5).
It is well settled that the phrase “consisting essentially
of” limits the scope of a claim to the specified ingredients and
those that do not materially affect the basic and novel
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