Appeal No. 2006-1245 Page 7
Application No. 10/294,106
vivo inhibition, and reading the claims in light of the specification, it is sufficiently clear
that one must administer the recited withanolides to a patient or subject to achieve
inhibition.
Similarly, the claims are not indefinite because they recite, at their broadest,
providing the withanolides to “a system containing the enzymes.” As stated in In re
Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971), “breadth is not to be
equated with indefiniteness.” Thus, the fact that the language “system containing the
enzymes” is broad does not mean that the language is indefinite. In our view, it is clear
from the claims and specification that the term “system” encompasses any system that
contains the two enzymes, including in vivo systems, such as mammals, as well as in
vitro systems. We therefore reverse the rejection under 35 U.S.C. § 112, second
paragraph.
However, we do not agree with Appellants’ argument that the transitional phrase
“consisting of,” present in the Markush language “selected from the group consisting of”
in claims 1, 3 and 15, excludes from those claims all “materials other than those recited
except for impurities ordinarily associated therewith.” Brief, page 17.
Specifically, the preambles of claims 1, 3 and 15 each recite “[a] method . . .
which comprises . . . .” (Emphasis added.) As stated in Gillette Co. v. Energizer
Holdings Inc., 405 F.3d 1367, 1371, 74 USPQ2d 1586, 1590 (Fed. Cir. 2005), “[t]he
word ‘comprising’ transitioning from the preamble to the body signals that the entire
claim is presumptively open-ended.” Moreover, “[t]he transition ‘comprising’ in a
method claim indicates that the claim is open-ended and allows for additional steps.”
Invitrogen Corp. v. Biocrest Manufacturing L.P., 327 F.3d 1364, 1368, 66 USPQ2d
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