Interference No. 104,396
Page 6
invention so long as the named elements, which are essential, are included. Genentech, Inc. v.
Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608, 1613 (Fed. Cir. 1997). It is understood,
however, that the open-ended transition "comprising" does not free a claim from its own
limitations. Specifically, the use of the transition term "comprising" cannot restore subject
matter that is otherwise excluded from the claim. Kustom Signals Inc. v. Applied Concepts, Inc.,
264 F.3d 1326, 1332, 60 USPQ2d 1135, 1139 (Fed. Cir. 2001); Spectrum Intl, Inc. v. Sterilite
Corp., 164 F.3d 1372, 1379-80, 49 USPQ2d 1065, 1070 (Fed. Cir. 1998). As we have construed
the term "(-)-enantiomer" to include, at most, no more than 5 weight percent of the
enantionter, the term comprising cannot open a claim to the (-)-enantiomer to the inclusion of
more than 5 weight percent of the (+)-enantiomer .4
We note that a claim directed towards an "admixture" of the (-)-enantiomer and the (+)
enantiomer allows for the presence of major amounts of either the (-) or the (+)-enantiomer.
Specifically, such a claim merely requires that the two components, i.e., the (-) and (+)
enantiomer, both be present. For example, a claim to an "admixture" of the (-)-enantiomer and
the (+)-enantiomer could have 20% of the (-)-enantiomer (which is defined in this interference to
contain at most 5% of the corresponding (+)-enantiomer) and 80% of the (+)-enantiorner. The
'We note that Belleau claim 4 is directed to a method employing a compound of formula
(1), wherein the compound of formula (1) "comprises" the (-)-enantiomer. Belleau claim 5
depends from Belleau claim 4 and states that the compound of formula (1) "is substantially free
of the corresponding (+)-enantiomer." It is unclear on this record whether the doctrine of claim
differentiation would require Belleau claim 4 to not be substantially free of the corresponding
(+)-enantiomer. As the parties did not address this issue and as it is not clear that the doctrine of
claim differentiation applies, we maintain our holding that the terminology "comprising (+
enantiomer" allows for no more than 5 weight percent of the corresponding (+)-enantiomer.
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