Appeal No. 2004-1112 Page 6
Application No. 09/829,707
can be used to treat obesity of the Bremer et al[.] patent anticipates the instantly
claimed chemical composition used to stimulate weight loss in a patient.” Id.,
page 5.
Appellant argues that the claims use the transitional phrase “consisting
essentially of”, and therefore do not encompass compositions (such as Bremer’s)
that include a lipase inhibitor along with acarbose. Appeal Brief, pages 10-11. In
response, the examiner argues that the addition of a lipase inhibitor to an
acarbose-containing composition would not change the “basic and novel
characteristics” of the composition, because “there is no indication in the Bremer
et al[.] patent that the presence of the lipase inhibitor in the composition of the
Bremer et al[.] patent alters the chemical formula of the acarbose and the
hydroxypropylmethylcellulose of the Bremer et al[.] patent,” and “Appellant has
not clearly defined the ‘basic and novel characteristics of the instantly claimed
composition’ in such a way that a lipase would be excluded from the instantly
claimed composition.” Examiner’s Answer, pages 8 and 9.
We agree with Appellant that the instant claims do not read on the
composition disclosed by Bremer. “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).
The question, then, is: what are the basic and novel characteristics of the
claimed composition? According to the specification, “[a]carbose is an inhibitor
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