Appeal No. 2001-2633 Page ~ PAGE ~3~
Application No. 07/323,182
phrase “consisting essentially of” in reference to the glycolipid component. See
e.g., appellants’ claim 81. “By using the term ‘consisting essentially of,’ the
drafter signals that the invention necessarily includes the listed ingredients and is
open to unlisted ingredients that do not materially affect the basic and novel
properties of the invention.” PPG Indus. Inc. v. Guardian Indus. Corp, 156 F.3d
1351, 1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998). According to
appellants’ specification (page 6, emphasis added), liposomes within the scope
of the claimed invention may be composed of lipid mixtures:
Suitable lipids that may be used in the present invention include
glycolipids such as glycosphingolipids and galactolipids such as
digalactosyl diglyceride (DGDG) or monogalactosyl diglyceride
(MGDG) and GDGD and/or MGDG in combination with
phospholipids such as phosphatidylcholine, phosphatidylserine,
phosphatidylinositol, or phosphatidylethanolamine and their
derivatives and sterol or tocopherol monoesters of diacids, such as
cholesterol hemisuccinate and tocopherol hemisuccinate,
respectively.
However, notwithstanding that appellants’ liposomes may contain membrane
components other than glycolipids, appellants’ claims require that the liposome
must, at a minimum, contain glycolipids. Therefore, the examiner must identify
some suggestion in the prior art to select glycolipids from the genus of
membrane components set forth in Kikuchi. Similarly, the examiner must identify
some suggestion in the prior art to select acetaminophen or sodium salicylate
from the genus of drugs that can be encapsulated into liposomes according to
Kikuchi.
In this regard, we remind the examiner that the fact that a claimed species
or subgenus is encompassed by a prior art genus is not sufficient by itself to
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