Appeal 2007-1529
Application 10/385,722
1830 (Fed. Cir. 2004). In assessing a broadest reasonable claim construction
wherein a potentially exclusionary “consisting essentially of” transitional
phrase is involved, it is appropriate that Appellants bear the burden of: (1)
showing the basic and novel characteristics of their claimed invention, and
(2) establishing how those characteristics would be materially changed by
any allegedly excluded component of an applied reference. See In re
De Lajarte, 337 F.2d 870, 873-74, 143 USPQ 256, 258 (CCPA 1964);
Ex parte Hoffman, 12 USPQ2d 1061, 1063-64 (BPAI 1989).
Here, Appellants have not carried this burden by their unsubstantiated
arguments to the effect that claim 36 would exclude the presence of amounts
of calcium as employed by EP ‘710 in the alloy being treated therein
“because such an addition of calcium would materially affect the basic and
novel characteristic(s) of the claimed invention (i.e., it would make the alloy
something other than magnesium alloyed with aluminum, zinc, and
manganese). Reply Br. 9. While we agree with Appellants that EP ‘710
teaches that calcium addition to such an alloy increases the creep resistance
properties thereof (id.), the question before us in assessing the scope of
appealed claim 36 is whether the addition of calcium would detrimentally
affect the basic and novel characteristics of Appellants’ process. Appellants
have not introduced any persuasive evidence showing how the addition of
calcium to the alloy would materially alter the basic and novel
characteristics of Appellants’ inventive process. In this regard, Appellants
do not limit their process to low creep resistance or non-calcium containing
alloys as evidenced by claim 1.
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