Appeal No. 2005-1459
Application No. 09/950,612
characteristic(s) of a composition. See PPG Indus. v. Guardian
Indus. Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed.
Cir. 1998); In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461,
463 (CCPA 1976); and Ex parte Davis, 80 USPQ 448, 450 (Bd. App.
1948). Accordingly, the examiner is incorrect in interpreting
this phrase as restricting the composition to the ingredients
listed. As disclosed by appellants on page 3 of their
specification, a “typical slurry” consists of a solid phase of
abrasive material and a liquid chemical solution phase.
Therefore the scope of “slurry consists essentially of” (with or
without the word “only”) would have been clear to one of ordinary
skill in this art. See In re Warmerdam, 33 F.3d 1354, 1361, 31
USPQ2d 1754, 1759 (Fed. Cir. 1994).
The examiner states that “the abrasive mixture” lacks
antecedent basis in claims 2, 3, 5 and 6 (Answer, page 3).1 On
page 5, paragraph (11) of the Answer, the examiner apparently
withdraws this portion of the rejection. Accordingly, this part
of the rejection under paragraph two of section 112 is not before
us on appeal (see Other Issues below).
1We note that claim 6 has not been included in the statement
of the rejection on page 3 of the Answer. This error is harmless
in view of our disposition of this rejection.
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