Appeal 2007-3146
Application 10/002,952
We have considered Appellants’ argument and are unpersuaded for
the reasons below.
Generally, by using the phrase “consisting essentially of,” applicant
signals that the invention necessarily includes the listed components in the
claim and is open to unlisted components that do not materially affect the
basic and novel properties of the invention. 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, 1353-354
(Fed. Cir. 1998) (citing Ex parte Davis, 80 USPQ 448, 449-50 (BPAI
1948)). With an invention claimed using “consisting essentially of”
language, applicant bears the burden of showing that the basic and novel
characteristics of the claimed invention would be materially affected by the
presence of additional components in a prior art invention that otherwise
corresponds to applicant’s claimed invention. In re De Lajarte, 337 F.2d
870, 874, 143 USPQ 256, 258 (CCPA 1964).
Appellants have proffered no showing that the phrase “consisting
essentially of” in claim 14 excludes an additional layer. Appellants have not
satisified their burden of showing that an additional layer would materially
affect the basic and novel characteristics of the claimed invention. De
Lajarte, 337 F.2d at 874, 143 USPQ at 258.
It appears from Appellants’ reference to Tajima’s Figure 1 as showing
the “additional layer” (Br. 17) that Appellants are referring to Tajima’s
substrate protective film 30 as being the “additional layer.” However, such a
position contradicts Appellants’ disclosure that the optical data recording
medium may include an additional protective film 30 for protecting the
substrate (Specification 9:15-22). Accordingly, in light of Appellants’
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