Appeal 2007-1174
Application 11/001244
that does not materially affect the basic and novel characteristics of the
claimed invention. See In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461,
463 (CCPA 1976). However, the term “consisting essentially of” does not
necessarily limit the claims to exclude certain materials when the
specification clearly indicates that these same materials may be present. See
Herz, supra; Ex parte Boukidis, 154 USPQ 444 (Bd. Pat. App. 1966). When
relying on numerous references, it is incumbent upon the Examiner to
identify some suggestion or motivation to combine the references as
proposed. See In re Mayne, 104 F.3d 1339, 1342, 41 USPQ2d 1451, 1454
(Fed. Cir. 1997).
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the claimed phrase “consisting
essentially of” does not exclude accelerators since Appellant’s Specification
and Claims clearly include accelerators in the adhesive compositions of the
invention (see claims 7 and 9 on appeal; Specification 3:15, 6:2, and 7:3-
9:11). See Herz, supra. Therefore, accelerators would not have affected the
basic and novel characteristics of the claimed adhesive compositions (note
that claim 9 on appeal recites a desired tensile shear strength, not a fixturing
time). It appears that the “basic and novel characteristic” of the claimed
composition is the “improved peel strengths” (Specification 1:13-14).
Accordingly, we determine that the accelerators disclosed in the applied
prior art are not excluded from the claims on appeal.
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