Appeal 2006-2969
Application 10/394,075
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 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, summarized
above, reveals no teachings of coated or chemically modified surfaces which
do not permit particles more hydrophobic than such surfaces to adhere
directly thereto or be directly located thereon to the extent that the basic and
novel characteristics of the claimed textile materials and fabrics is affected.
Reliance on evidence which merely shows hydrophobic particles adhering to
untreated fibers does not satisfy Appellants’ burden to establish that the
written description in the Specification evinces which coated and chemically
modified surfaces are deleterious to the basic and novel characteristics of the
claimed invention and thus, are excluded from the claims by reasons of the
transitional term “consisting essentially of.” See PPG Indus., 156 F.3d at
1354, 48 USPQ2d at 1353-54; Herz, 537 F.2d at 551-52, 190 USPQ at 463.
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