Appeal 2007-1529
Application 10/385,722
The Examiner, on the other hand, contends that there is no persuasive
support for the proposition that the “consisting essentially of” language
excludes calcium from the alloy being processed in claim 36 (Answer 8 and
9).
Hence, the principal issue raised by Appellants’ opposition to the
Examiner’s obviousness rejection of claim 36 can be phrased as a question
as follows: Whether Appellant’s have established that representative claim
8 excludes non-trace amounts of calcium in the magnesium alloy employed
in the claimed method by designating the alloy composition using
“consisting essentially of” transitional language? We answer that question
in the negative and affirm the Examiner’s obviousness rejection of claim 36.
The “phrase ‘consisting essentially of’ limits the scope of a claim to
the specified ingredients and those that do not materially affect the basic and
novel characteristic(s) of a composition.” In re Herz, 537 F.2d 549, 551-52,
190 USPQ 461, 463 (CCPA 1976); see also PPG Indus., Inc. v. Guardian
Indus. Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir.
1998) (“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”).
However, it is also the case that during examination, "claims . . . are to
be given their broadest reasonable interpretation consistent with the
specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art."
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827,
15
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