Appeal No. 2003-1162 Page 8
Application No. 09/468,292
In re Harnisch, 631 F.2d 716, 719-20, 206 USPQ 300, (CCPA 1980)(“Markush was the name of
an applicant for patent (Eugene A. Markush) who happened to use in a claim a type of definition
of a genus or subgenus by enumeration of species, which he did not devise and which had been
used before in patent claims.”); see also Abbott Labs. v. Baxter Pharmaceutical Products Inc.,
334 F.3d 1274, 1280-81, 67 USPQ2d 1191, 1196 (Fed. Cir. 2003)(A Markush group is a listing
of specified alternatives of a group in a patent claim, typically expressed in the form “a member
selected from the group consisting of A, B, and C,” but which also can be expressed, for
instance, as “wherein R is A, B, C, or D”).
The rejection is made on the basis that “the improper Markush group language ‘consists
essentially of’ renders the scope of the claims indefinite.” (Answer, p. 19). According to the
Examiner, the language “consists essentially of” leaves the claim open to elements (substituents)
other than those explicitly recited in the Markush groups (Answer, pp. 19-20). The Examiner
finds that Appellant “has not provided any indication of what these other elements (i.e., the
elements not explicitly listed but encompassed by the language ‘consists essentially of’) may be.”
(Answer, p. 20). Because of this, the Examiner concludes that “one skilled in the art would not
recognize what elements are encompassed by the claims, and thus the scope of the claims is
indefinite.” (Answer, p. 20).
In response, Appellant’s sole argument is that “[t]he phrase ‘consisting essentially of’ is
acceptable, and commonly used, terminology for a Markush group.” (Amended Brief, p. 17). As
evidence, Appellant states that a search of the USPTO database for the phrase “group consisting
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