Appeal No. 2006-1253 Page 4
Application No. 09/969,451
For their part, appellants admit (Appeal Brief, page 6) “Apelian teaches a
florfenicol formulation with up to 65% N-methyl-2-pyrrolidone.” Appellants
emphasize, however, that each of Apelian’s formulations require “the inclusion of
polyethylene glycol.” Id. Accordingly, appellants assert that Apelian fails to
“provide an enabling disclosure for a florfenicol formulation having greater than
30% N-methyl-2-pyrrolidone that excludes polyethylene glycol.” Id. There is,
however, no evidence on this record that polyethylene glycol would affect the
basic and novel properties of appellants’ claimed invention. In this regard, we
note, “‘[c]onsisting essentially of’ is a transition phrase commonly used to signal a
partially open claim in a patent. . . . 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).
At its core, appellants’ claimed invention is drawn to a composition that
consists essentially of florfenicol and N-methyl-2-pyrrolidone. The composition
taught by Apelian includes these two ingredients. In addition, appellants’ claimed
composition may include ethanol. See e.g., Specification, bridging paragraph,
pages 2-3. Apelian’s composition includes the viscosity reducing agent ethanol.
See e.g., Apelian, column 2, lines 18-20. Appellants’ specification does not
speak to the inclusion of polyethylene glycol which is found in the composition
taught by Apelian, however, there is no evidence on this record to suggest that
polyethylene glycol will affect the basic and novel characteristics of appellants’
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