Appeal 2007-0321
Application 10/669,547
both Examples 1 and 2 in the Specification were conducted with 100%
mineral oil (id. at 12).
We are not persuaded by this argument. “By using the term
‘consisting essentially of,’ the drafter signals 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 (Fed. Cir. 1998).
Moreover, Appellants bear the burden of establishing that the ingredients
present in the prior art composition are excluded by the “consisting
essentially of” claim language. In re De Lajarte, 337 F.2d 870, 874 (CCPA
1964).
In the instant case, Appellants do not point to any evidence that any of
the additional ingredients in either LaHann’s or Michaels’ pre-treatment
compositions would affect the basic and novel properties of the invention.
We note that Appellants’ Examples 1 and 2 list only mineral oil as the
pretreatment composition. However, claim 16 is not so limited, reciting
from 90 to 100% of lipophilic materials. Moreover, the Specification states
that “[c]olorants and fragrances may be included in . . . skin pretreatment
compositions of the present invention. Each of these substances may range
from about 0.05 to about 5% . . . by weight . . .” (Specification 9, ¶ [00027]).
In view of the Specification’s inclusion of ingredients in addition to the
lipophilic material, as well as the lack of evidence that the additional
ingredients in LaHann and Michaels would affect the basic and novel
properties of the claimed invention, we agree with the Examiner that the
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