Patent Law

Consisting Essentially Of

By Alloy Comprising

In BPAI decision Ex parte AGARWAL (Appeal No. 2008-2005 / Application No. 11/124,935), Applicants filed a patent application directed to a gold alloy composition.  The patent application included independent claim 7 using the transitional phrase "consisting essentially of" as opposed to "comprising".  In one argument to the Board, Applicant attempted to distinguish claim 7 from the prior art based on the ?consistent essentially of? language:

Claim 7 excludes the possible inclusion of germanium, as taught by Diamond and the first Japanese reference. It also excludes the possible inclusion of nickel, as taught by the second Japanese reference. It also excludes the possible inclusion of a color having "a value of between about -3.0 to about +5.0 CieLab a* color units" and "a value of between about +20.0 to +22.0 CieLAb b* color units".

The Board reversed without addressing the above argument, and a patent was granted.  How would the Board have considered this argument if it did not become moot?

In alloy compositions, the transitional phrase "consisting essentially of" limits the scope of a claim to the specified elements and those that do not materially affect the basic and novel characteristic(s) of the alloy composition.  According to USPTO policy, absent a clear indication in the specification or claims of what the basic and novel characteristic actually are, "consisting essentially of" will be construed as equivalent to "comprising".  Thus, to exclude the presence of germanium, nickel, etc. from the scope of claim 7, the Applicant would need to specify what are the basic and novel characteristics of the alloy composition.  Also, if an applicant contends that additional elements in the prior art are excluded by the recitation of "consisting essentially of", applicant has the burden of showing that the introduction of additional elements would materially change of the characteristics of applicant's invention.  Accordingly, merely arguing that a claim having ?consisting essentially of? language excludes certain elements would not help to obtain allowance of the claim.

Now, suppose a competitor forms an gold alloy composition have 0.0001% nickel added.  Is Applicant now estopped from asserting claim 7 against this competitor?  Applicant admitted during prosecution that claim 7 excludes the inclusion of nickel.

Full post as published by Benefit of Hindsight on September 15, 2008 (boomark / email).