Appeal No. 2001-1900 Page 2
Application No. 08/981,700
GROUND OF REJECTION
Claims 1, 13, 37, and 19 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Shuji.
We reverse.
DISCUSSION
On this record, the examiner finds (Answer, page 4), as set forth at page
19 of appellants’ specification, that the “instant invention does not bind the
chimeric peptide C7 as well as the prior art [G1] receptor does….” While the
examiner agrees (Answer, page 6) that the claimed receptor subtype is different
than the prior art receptor, the examiner maintains (Answer, page 3) that the
transitional phrase “consisting essentially of” broadens the scope of the claimed
receptor to encompass all galanin receptor subtypes as long as enough
sequence identity is retained to classify the resulting receptor as a galanin
receptor. We cannot agree with the examiner’s position.
In contrast to the examiner’s interpretation of the transitional phrase
“consisting essentially of,” the court in In re Herz, 537 F.2d 549, 551-552,
190 USPQ 461, 463 (CCPA 1976) explains:
In In re Janakirama-Rao, [317 F.2d 951, 137 USPQ 893
(CCPA 1963)] … this court held that the phrase “consisting
essentially of” limits the scope of a claim to the specified
ingredients and those that do not materially affect the basic and
novel characteristic(s) of a composition. It cited Ex parte Davis, 80
USPQ 448 (Pat. Off. Bd. App. 1948), … and quoted approvingly
the following portion of the opinion:
In the present case where the claims recite three
ingredients and the reference discloses four, the important
question is whether the term “consisting essentially of”
excludes that fourth ingredient. We think that it does, since
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