Appeal No. 2006-1756
Application 10/087,742
We first consider the examiner’s application of Rikiya. Appellants submit that the
lead-free solder disclosed by the reference (see, e.g., [0011] through [0014]) contains “bismuth
and/or indium,” that is, Bi and/or In, which provide certain characteristics to the solder, thus
teaching “that Bi and In alter a basic characteristic of the solder” and are, therefore, excluded
from claim 1 by the transition term “consisting essentially of,” arguing that “[t]he issue is what
the claims cover, and not what the specification discloses” (brief, pages 4-6; reply brief, pages
2-3). The examiner responds that appellants have the burden to establish that the introduction of
Bi and/or In would materially alter the basic and novel characteristics of the claimed solder
composition, and argues that the written description at pages 8-9 of the specification does not
exclude these elements (answer, pages 4-5).
We find substantial evidence in the record supporting the examiner’s position. The
transitional term “consisting essentially of” appearing in appealed claims 1, 2 and 6 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 of additional element(s) in the amount(s) taught in the
applied prior art in the claimed compositions would materially affect the basic and novel
characteristics thereof, 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 written description in
appellants’ specification must be considered. Herz, 537 F.2d at 551-52, 190 USPQ at 463 (“[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
2 In response to our remand entered December 16, 2005, in Appeal No. 2006-0215 in this
application, the examiner vacated the Office communication mailed October 17, 2005, in the
Office communication mailed December 29, 2005.
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