Appeal No. 1997-2532
Application No. 08/427,569
Accordingly, we find the examiner has not carried his burden of establishing a
prima facie case of obviousness. Having concluded that the examiner has not established
a prima facie case of obviousness, we do not reach the rebuttal declaratory evidence
discussed in appellants’ brief (pp. 9, 16, 19-22 and 30-32) and reply brief (pp. 8 and 11).
The rejections of claims 17-36 under 35 U.S.C. § 103(a) as being unpatentable
over Urdea in view of Seiki and either Hogan or Ratner alone or further in view of
Stratagene are reversed.
OTHER MATTERS
The transitional phrases "comprising," "consisting essentially of" and "consisting
of" are terms of art which define the scope of a claim with respect to what unrecited
additional components or steps, if any, are excluded from the scope of the claim.
"Comprising" is open-ended and does not exclude additional, unrecited components or
method steps, while "consisting of" is close-ended and excludes any component or step
not specified in the claim. "Consisting essentially of" occupies a middle ground and limits
the scope of a claim to the specified components or steps and those that do not materially
affect the basic and novel characteristic(s) of the claimed invention. See e.g., the MPEP,
7th ed. (rev. 1, February 2000), at § 2111.03.
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