Appeal No. 2006-0729 Page 4
Application No. 10/322,566
which further comprises at least one additive selected from a Markush group of
additives.1
As we understand the examiner’s reasoning (Answer, page 4), claims 18
and 22 are indefinite because they require that at least one additional additive is
present in the composition which consists essentially of ethyllinoleate and
triethylcitrate. It appears that the examiner’s concern is that these additional
additives may affect the basic and novel properties of a composition consisting
essentially of ethyllinoleate and triethylcitrate. See Answer, pages 8-9.
Therefore, the issue before us is the interpretation of the transitional
phrase “consisting essentially of.” “‘Consisting essentially of’ is a transition
phrase commonly used to signal a partially open claim in a patent. . . . 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, 48 USPQ2d 1351,
1353-54 (Fed. Cir. 1998).
What are, however, the basic and novel properties of appellant’s claimed
composition? At its core, the claimed invention is drawn to a composition that
consists essentially of ethyllinoleate and triethylcitrate. See e.g., claim 12.
Therefore, we must explore the basic and novel properties of ethyllinoleate and
triethylcitrate. As discussed above, lytic enzymes produced by bacteria present
on human skin prefer ethyllinoleate and triethylcitrate as a substrate over sebum
1 The portion of the subject matter covered by claim 22 that is in controversy is essentially a
combination of the subject matter set forth in claims 12 and 18.
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