Appeal No. 93-3228
Application 07/796,023
In construing the phrase “consisting essentially of” in
appellant’s claims, it is necessary and proper to determine
whether the specification reasonably supports a construction
which would include the materials of the cited prior art. See
In re Herz, 537 F.2d 549, 551, 190 USPQ 461, 463 (CCPA 1976).
Appellant’s specification, under the heading “Summary of the
Invention”, states that the invention is that “lipid powder is
simply admixed with a suitable amount of bioactive
macromolecule, and compressed into a disc or rod without any
other components.” (specification, sentence bridging pages 7
and 8, emphasis added). From the remainder of appellant’s
specification, including the examples, there is no disclosure
or teaching that any components can be employed in the implant
other than the claimed solid bioactive polypeptide and lipid
powder. 4 The legal standard for
definiteness under paragraph two of 35 U.S.C. § 112 is whether
a claim reasonably apprises those of skill in the art of its
scope. See Amgen Inc. v. Chugai Pharmaceutical Co. Ltd., 927
4 See the specification, page 8, lines 25-28, page 9, lines 13-25, and Examples
1-5 on pages 11-21.
5
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