Appeal 2007-3543
Application 10/675,138
80 USPQ 448 (Pat. Off. Bd. App. 1948)). In arriving at this determination,
the written description in Appellants’ Specification must be considered.
Herz, 537 F.2d at 551-52, 190 USPQ at 463 (“[I]t is necessary and proper to
determine whether [the] specification reasonably supports a construction”
that would exclude or include particular ingredients.); see also PPG Indus.,
156 F.3d at 1354-357, 48 USPQ2d at 1353-356 (Patentees “could have
defined the scope of the phrase ‘consisting essentially of’ for purposes of its
patent by making clear in its specification what it regarded as constituting a
material change in the basic and novel characteristics of the invention. The
question for our decision is whether PPG did so.”).
The written description in the Specification invariably uses the open-
ended term “comprising” to describe the “material,” including such language
as “use of a material comprising antimony silicate as a sorbet” and “a
method of preparation of a material comprising antimony silicate, the
method comprising reacting together . . . ” (Specification ¶¶ 0004 and 0009;
see also, e.g., ¶¶ 0011, 0013, 0029, 0031, 0032, and 0039). Indeed, there is
no disclosure in the Specification which employs the language “consisting
essentially of” or sets forth any components or ingredients that would
materially affect the basic and novel characteristics of the specified
“material.” The Minihan Declaration has no bearing on the interpretation of
the claim language in light of the written description in the Specification.
Reliance on extrinsic evidence of results obtained with “material”
specifically disclosed vis-à-vis material which is related thereto in some
respect, such as that set forth in the Minihan Declaration, does not satisfy
Appellants’ burden to establish that the written description in the
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