Appeal 2007-4097
Application 09/792,776
recognized that Appellants have not indicated which portion of the
Specification identifies the mechanical (tensile) strength as the basic and
novel characteristic of the claimed invention. Second, the single
embodiment chosen as representative of the claimed invention is not
commensurate in scope with the claimed subject matter. That is, example 11
comprises specific amounts of specific components and the claims are not
limited solely to these components in the stated amounts. Third, the tensile
strength exhibited for example 11 appears to be achievable by thermoplastic
resins that have been formed incorporating the thermoplastic resins in the
pre-cross-linked softening agent. Particularly note the tensile strength for
examples 15-18. Thus, we determine that Appellants have not met their
burden to show that the basic and novel characteristics of the claimed
invention would be materially affected by an ingredient or step of the prior
art. In re De Lajarte, 337 F.2d 870, 874, 143 USPQ 256, 258 (CCPA 1964);
Ex parte Hoffman, id. On the record before us, Appellants have not carried
their burden of showing that the basic and novel characteristics of the
invention defined by appealed claim 1 would be materially affected by the
addition of thermoplastic resins to the pre-cross-linked softening agent.
In conclusion, based on the foregoing reasons we cannot agree with
Appellants that the “consisting essentially of” language distinguishes over
Tasaka and Hamanaka. As a consequence, the Examiner’s decision
rejecting the appealed claims 1-9 is affirmed.
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