Ex parte THERESA M. ALLEN, PAUL USTER, FRANCIS J. MARTIN, and SAMUEL ZALIPSKY
Appeal 2008-5030
Application 11/049,848
Technology Center 1600
Decided: February 4, 2009
The claim at issue was the following:
A targeting conjugate consisting essentially of (i) a lipid having a polar head group and a hydrophobic tail, (ii) a hydrophilic polymer having a proximal end and a distal end, said polymer attached at its proximal end to the head group of the lipid, and (iii) a targeting ligand attached to the distal end of the polymer, said targeting conjugate in dried form.
The Examiner argued that the claim was anticipated by the prior art because it involved a drying step; The appellant argued that the prior art included byproducts that were present in the dried form and the presence of the term "consisting essentially of" put the prior art outside the scope of the pending claim. The Board affirmed the Examiner.
The Board explained:
“By using the term ‘consisting essentially of,’ the drafter signals 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.” PPG Indus. Inc. v. Guardian Indus. Corp, 156 F.3d 1351, 1354 (Fed. Cir. 1998)."
The term "consisting essentially of" applied to the conjugate and not any other by-products present in the composition.
They stated: "Appellants have not shown that any by-products that would be present with the conjugate in the lipid pellet would materially affect the basic and novel properties of the conjugate." "Thus, the phrase “consisting essentially of” does not exclude unlisted elements from being in the same reaction product as the conjugate. Instead, it excludes from the conjugate itself unlisted elements that materially affect its basic and novel properties."
Thus, without them showing anything to show that the by-products would affect the conjugate the claim is anticipated. Case can be found here
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