Appeal 2006-2351
Application 10/645,493
Generally, by using the phrase “consisting essentially of” (i.e.,
“consists essentially of”), applicant signals that the invention necessarily
includes the listed components in the claim and is open to unlisted
components that do not materially affect the basic and novel properties of
the invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463
(CCPA 1976). See also, PPG Indus., Inc. v. Guardian Indus. Corp., 156
F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998) (citing Ex
parte Davis, 80 USPQ 448, 449-50 (B.P.A.I. 1948)). With an invention
claimed using “consisting essentially of” language, applicant bears the
burden of showing that the basic and novel characteristics of the claimed
invention would be materially affected by the presence of additional
components in a prior art invention that otherwise corresponds to applicant’s
claimed invention. In re De Lajarte, 337 F.2d 870, 874, 143 USPQ 256, 258
(CCPA 1964).
Appellant has proffered no showing that the phrase “consists
essentially of” in claim 17 excludes abrasive particles in the polishing pad.
Appellant has not shown that abrasive particles would materially affect the
basic and novel characteristics of the claimed invention. Id. The basic and
novel characteristic of the presently claimed invention is a greater friction
reduction achieved by incorporating solid lubricant particles into the
polishing pad rather than the slurry (Specification 9, ll. 1-4). Thus, to
establish that the phrase “consists essentially of” in claim 17 excludes
abrasive particles, Appellant needs to show that abrasive particles in the
polishing pad (i.e., finishing element) materially affect the reduction in
friction.
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