Appeal No. 2005-1593
Application No. 10/054,647
‘consisting essentially of’ claim occupies a middle ground between closed claims that
are written in a ‘consisting of’ format and fully open claims that are drafted in a
‘comprising’ format.” PPG Industries v. Guardian Industries, 156 F.3d 1351, 1354, 48
USPQ2d 1351, 1353-54 (Fed. Cir. 1998). Thus, appellants claim scope is by definition,
at least broader than the SEQ ID NO:2 sequence itself. Moreover, absent a clear
indication in the specification or claims of what the basic and novel characteristics of the
claimed polypeptide actually are, the term “consisting essentially of” is construed as
equivalent to “comprising.” See, e.g., PPG, 156 F.3d at 1355, 48 USPQ2d at 1355.1
Appellants have not defined in the specification the claim scope or scope of the
invention proscribed by the claim term “consisting essentially of.” We remind appellant
that it is their burden to precisely define the invention, not the PTO’s. In re Morris, 127
F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997). Appellants always have the
opportunity to amend the claims during prosecution, and broad interpretation by the
examiner reduces the possibility that the claim, once issued, will be interpreted more
broadly than is justified. In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550- 51
(CCPA 1969).
1 In re Crish, 393 F.3d 1253, 1256, 73 USPQ2d 1364,1367 (Fed. Cir. 2004) was cited in the
Decision for the comparative proposition that when a specific sequence is interpreted in view of
“comprising” claim language, additional amino acids are possible at either end of the sequence.
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