Appeal No. 2006-0313
Application 10/300,276
Thus, the subject language does not exclude ingredients which act as either a
“complexing” agent or a “buffering” agent and can generate ammonia, and particularly since
appellants have not established that such ingredients would be excluded from the claimed
composition because of the transitional term “consisting essentially of.” This transitional phrase
is used in claim construction to indicate that “the invention necessarily includes the listed
ingredients and is open to unlisted ingredients that do not materially affect the basic and novel
properties of the invention.” PPG Indus., Inc. v. Guardian Indus. Corp., 156 F.3d 1351, 1354,
48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998). Thus, the interpretation of this transitional term
requires a determination of whether the inclusion in the claimed compositions of additional
element(s) in the amount(s) taught in the applied prior art would materially affect the basic and
novel characteristics of the claimed composition, because this phrase customarily excludes such
materials. See In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976) (explaining
Ex parte Davis, 80 USPQ 448 (Pat. Off. Bd. App. 1948)). In arriving at this determination, the
the written description in appellants’ specification must be considered. Herz; supra (“[I]t is
necessary and proper to determine whether [the] specification reasonably supports a
construction” that would exclude or include particular ingredients.); see also PPG Indus.,
156 F.3d at 1354-57, 48 USPQ2d at 1353-56 (Patentees “could have defined the scope of the
phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification
what it regarded as constituting a material change in the basic and novel characteristics of the
invention. The question for our decision is whether PPG did so.”).
Our review of the written description in the specification reveals no teachings of
additional elements that materially affect the basic and allegedly novel characteristics of the
claimed compositions, which are disclosed to constitute an “electroless plating solution, which
reduces or substantially eliminates pH instability and ammonia evaporation” (specification, page
3 ll. 19-20). Indeed, the compositions are disclosed as “including an ammonia-free
complexing/buffering agent” (page 2, l. 8); the compositions “comprising cobalt ions, at least
one reducing agent, and an ammonia-free complexing/buffering agent (such as glycine,
- 4 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007