Appeal 1997-2572
Application 08/220,562
Berenter and determined that the scope of the claim precluded
application of a pesticide to the second habitat. As noted by
the district court, "[a]n additional step that allows the use
of the pesticide in an area other than the first habitat is
inconsistent with *** [Berenter's] claim."
Mannesmann's claim and Berenter's claim are similar to
the applicants' claim 1 in that all contain "consisting of" in
one clause of the claim and not in the preamble. The term
"consisting of", when used in a claim, is a term of art in
patent law. It closes the claim, or the clause of the claim
in which it appears, to the inclusion of materials other than
those recited except for impurities ordinarily associated
therewith. Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1949).
The "consisting of" in clause (II)(A) of applicants' claim 1
limits the dianhydrides used to make applicants' polyamic acid
to the Markush group of:6
[1] 3,3',4,4'-biphenyltetracarboxylic dianhydride
[BPDA],
Ex parte Markush, 1925 Dec. Comm'r Pat. 126, 127 (Comm'r Pat. 1924) ("material6
selected from the group consisting of aniline, homologues of aniline and halogen
substitutes of aniline").
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