Appeal No. 2006-1245 Page 8
Application No. 10/294,106
1631, 1634 (Fed. Cir. 2003). Thus, the word “comprises” in the preambles of
Appellants’ independent claims signifies that the claims encompass subject matter
containing not only the elements required by the claims, but also elements not recited in
the claims. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501, 42 USPQ2d 1608,
1613 (Fed. Cir. 1997) (“‘Comprising’ is a term of art used in claim language which
means that the named elements are essential, but other elements may be added and
still form a construct within the scope of the claim.”).
The phrase “consisting of,” within the Markush terminology “selected from the
group consisting of,” limits the Markush groups of claims 1, 3 and 15 to the members
set forth within the group. See Gillette v. Energizer, 405 F.3d at 1372, 74 USPQ2d at
1590 (“A Markush group by its nature is closed.”). However, as discussed above, the
preamble of every independent claim on appeal herein contains the open term
“comprises,” which does not exclude the presence of additional elements or process
steps. Genentech v. Chiron, supra. Thus, contrary to Appellants’ argument (Brief,
pages 17-18), the “consisting of” language in the Markush group descriptor does not
serve to limit the claims to the administration of only the named withanolides, to the
exclusion of any ingredient other than impurities normally associated with those
compounds. See Mannesmann Demag Corp. v. Engineered Metal Products Co., Inc.,
793 F.2d 1279, 1282, 230 USPQ 45, 46 (Fed. Cir. 1986) (holding that an element within
the body of a claim using the term “consisting of” did not limit an entire claim containing
the term “comprising” in the transition from the preamble to the body of the claim).
To summarize, we agree with Appellants that the appealed claims are definite.
We therefore reverse the rejection under 35 U.S.C. 112, second paragraph. However,
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