Appeal No. 2007-0491
Application No. 10/495,074
molding or polishing a lens,” (id.) and therefore would increase “the risk of
forming optical parts which do not have . . . excellent optical
characteristics.” (Br. 6.)
Similarly, Appellants argue that the basic and novel characteristics of
the claimed composition include good “workability” and “machinability,”
and “the bad smell resulting from compositions with the mercapto
compound . . . interferes with, or deters a worker from handling, molding or
polishing a lens, all of which affect the ‘workability’ and ‘machinability’ of
the curable composition/lens.” (Reply Br. 2.)
Thus, Appellants conclude that the “addition of the mercapto
compound would materially affect the basic and novel characteristics of the
claimed compositions.” (Br. 6.) Appellants argue that “it should not be
required that the ‘smell’ characteristic be disclosed in the specification.”
(Id.)
We are not persuaded by these arguments. First, as noted above, “[i]t
is axiomatic that claims are given their broadest reasonable construction
consistent with the specification.” Herz, 537 F.2d at 551, 190 USPQ at 463.
Therefore, we agree with the Examiner that it was proper to interpret the
phrase “consisting essentially of” based on the characteristics of the
composition identified in the specification, specifically, the ability of the
composition to provide an optical material having good balanced optical,
mechanical, and thermal properties.
Second, we do not agree that Appellants have shown that the
mercapto compound in the prior art composition materially affects a basic
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