Appeal No. 2006-1421
Application No. 10/434,397
point to nothing, in the subject specification which defines the
scope of this language by making clear what is regarded as a
material change in the basic and novel characteristics of the
appellants' invention. Id., 156 F.3d at 1355, 48 USPQ2d at
1355.
For example, lines 8 and 9 on the sixth page of the
specification (i.e., in the second full paragraph after the
heading "DETAILED DESCRIPTION OF THE INVENTION;" note: the
specification pages do not appear to be numbered) teach that,
"[i]n the practice of the present invention, it is desirable to
minimize additives and to attempt to exclude most additives
except for the hydrolysable compound(s)." Thus, while it is
clear that some though not necessarily all additives are
desirably excluded, no guidance is provided as to which
additives are excluded versus included by the claim language
"consisting essentially of" vis-à-vis materially affecting the
basic and novel properties of the invention.
Particularly under these circumstances, it is the
appellants' burden to show that the diethanolamine of Lefebvre's
Sample B is excluded by the claim 1 language under
consideration. PPG Industries., 156 F.3d at 1355-56, 48 USPQ2d
at 1355-56. See also In re Herz, 537 F.2d 549, 551-52, 190 USPQ
-5-
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