Appeal No. 2006-1253 Page 9
Application No. 09/969,451
formulation had a viscosity of 60 cP at 0°C relative to 50 cP for appellants’
formulation. At 25°C paragraph 6 of Mihalik II reports that the Apelian
formulation had a viscosity of 35.5 cP relative to 30.5 cP for appellants’
formulation. According to Mihalik II, this data shows “the superior syringeability
of [a]pplicant’s [sic] formulation.” Mihalik II, paragraph 6; Brief, page 8. As we
understand appellants’ arguments, this “superior syringeability” is due to the
absence of polyethylene glycol in appellants’ formulation. Stated differently, the
polyethylene glycol required by Apelian affects the basic and novel
characteristics of appellants’ claimed composition. We disagree.
Appellants place a great deal of weight on the viscosity of Apelian’s
formulation and attempt to distinguish their claimed invention from Apelian based
on viscosity. In this regard, we note that appellants can define “the scope of the
phrase ‘consisting essentially of’ for purposes of its patent by making clear in its
specification what it regarded as constituting a material change in the basic and
novel characteristics of the invention.” PPG Indus., 156 F.3d at 1355, 48
USPQ2d at 1355. On this record, however, appellants’ specification fails to
provide a definition that is sufficient to support their position. According to
appellants’ specification (paragraph 15),
[t]he viscosity of the formulation should be a maximum of
about 60 cPs at 25°C. Preferably, it is less than about 50 cPs at
25°C, and most preferably, it is less than about 40 cPs at 25°C. The
viscosity of the formulation should be a maximum of about 100 cPs
at 0°C. Preferably, it is less than about 80 cPs at 0°C, and most
preferably, it is less than about 60 cPs at 0°C.
As discussed above, according to Mihalik II both the Apelian formulation and
appellants’ formulation had a viscosity less than about 60 cPs at 25°C. The
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