Appeal No. 2005-1787 4
Application No. 10/211,027
range of 400 nm to 450 nm, to further cure the ink corresponding to the second step
recited in claims 1, 14 and 29. See the Answer, pages 3-4. The appellants do not
challenge the examiner’s finding that the transfer-coating step taught by Cicci corresponds
to the first step recited in claims 1, 14 and 29. Compare the Answer, pages 3-4, with the
Brief in its entirety; see also the appellants’ specification, page 3, line 26, to page 4, line 5,
defining “coating” as inclusive of “transfer coating”. The appellants only argue that Cicci
teaches additional coating steps excluded by the transitional phrase “consisting essentially
of” recited in claims 1, 14 and 29 and teaches the employment of an UV-light not
substantially free of wavelengths of about 230 nm to about 265 nm contrary to claims 1, 14
and 29. See the Brief, pages 3-4.
We are not persuaded by these arguments. First, as acknowledged by the
appellants (Brief, page 3), the transitional phrase “consisting essentially of” is open to
unclaimed steps which do not materially affect the basic and novel characteristics of the
claimed invention. Atlas Powder v. Du Pont de Nemours & Co., 750 F.2d 1569,
1573-74, 224 USPQ 409, 411 (Fed. Cir. 1984); In re Herz, 537 F.2d 549, 551-52, 190
USPQ 461, 463 (CCPA 1976); In re Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893,
896 (CCPA 1963). Concerning this matter, it is significant that the subject specification
discloses that “[t]he polymeric film may be coated with a UV-curable composition using
one or more coating steps and coating processes. Suitable coating processes include,
but are not limited to, ... thermal transfer printing, ... transfer coating, gravure coating,
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