Appeal 2007-3543
Application 10/675,138
tantalum. The transitional term “comprising” opens claim 22 to encompass
methods that include any amount of material which can extract metals from
an aqueous solution in addition to the specified material containing at least
doped antimony silicate. See, e.g., Exxon Chem. Pats., Inc. v. Lubrizol
Corp., 64 F.3d 1553, 1555, 35 USPQ2d 1801, 1802 (Fed. Cir. 1995) (“The
claimed composition is defined as comprising - meaning containing at least -
five specific ingredients.”); In re Baxter, 656 F.2d 679, 686-87, 210 USPQ
795, 802-03 (CCPA 1981) (“As long as one of the monomers in the reaction
is propylene, any other monomer may be present, because the term
‘comprises’ permits the inclusion of other steps, elements, or materials.”).
In considering the language “material consisting essentially of
antimony silicate doped with one or more elements selected from the group
consisting of tungsten, niobium, and tantalum,” we point out the claim term
“consisting essentially of” is used in claim construction to indicate, for
example, 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.” See, e.g., PPG Indus., Inc. v. Guardian Indus.
Corp., 156 F.3d 1351, 1354, 48 USPQ2d 1351, 1353-354 (Fed. Cir. 1998).
Thus, the interpretation of the “material” in this instance requires a
determination of whether any other components or ingredients in addition to
the specified doped antimony silicate would materially affect the basic and
novel characteristics of that “material” because this phrase customarily
excludes such components and ingredients. See In re Herz, 537 F.2d 549,
551-52, 190 USPQ 461, 463 (CCPA 1976) (explaining Ex parte Davis,
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