Appeal No. 2007-0491
Application No. 10/495,074
comprising components (A), (B), and (C) (abstract). Component A is a
(meth)acrylate that corresponds to formula (2) of claim 17 (full translation
¶ 0007). Component B is a mercapto compound (full translation ¶ 0008).
Component C is a (meth)acrylate that corresponds to formula (1) of claim 17
(full translation ¶ 0014). Satoshi states that component (B) is included in an
amount of from 0.1 to 8 parts by weight (abstract).
Satoshi describes polymerizing and hardening the resin composition
to obtain an optical member (abstract). Therefore, we find that the Examiner
has set forth a prima facie case that the mercapto compound does not
materially affect the ability of the composition to provide an optical material
having good balanced optical, mechanical, and thermal properties. Thus, we
conclude that the Examiner has set forth a prima facie case that the mercapto
compound is not excluded from claim 17 by the “consisting essentially of”
language.
It is Appellants’ burden to establish that a component included in a
prior art composition is excluded by the “consisting essentially of” language.
See Herz, 537 F.2d at 551, 190 USPQ at 463 (“an applicant who has not
clearly limited his claims is in a weak position to assert a narrow
construction” and “[t]here is no evidence that [the prior art] dispersant would
materially affect the basic and novel characteristic of [the claimed]
composition”).
Appellants argue that they have submitted a Rule 132 declaration
showing that if even a small amount of mercapto compound is added to the
compounds recited in claim 17, “a bad smell resulted during the molding.”
(Br. 4.) Appellants argue that the smell “deters a worker from handling,
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