Appeal 2006-2897
Application 10/074,715
IV. Additional Findings
1. No evidence has been provided showing that Appellants’ claimed
ranges provide unexpected results over the ranges taught by
Steaffens.
2. No evidence has been provided showing the additional components
of Steaffens would materially affect the claimed invention.
3. No evidence has been provided showing Steaffens’ compositions
are not inherently “capable of preserving thyroid stimulating
hormone.”
APPLICABLE PRINCIPLES OF LAW
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt,
211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000), quoted with
approval in In re Bigio, 381 F.3d 1320, 1324, 72 USPQ2d 1209, 1210-11
(Fed. Cir. 2004).
The “claim phrase ‘consisting essentially of’ excludes ingredients that
would ‘materially affect the basic and novel characteristics’ of the claimed
composition.” Atlas Powder Co. v. E.I. du Pont de Nemours & Co.,
750 F.2d 1569, 1574, 224 USPQ 409, 412 (Fed. Cir. 1984) (quoting In re
Herz, 537 549, 551, 190 USPQ 461, 463 (CCPA 1976). Thus, the language
“consisting essentially of” can include additional components that do not
materially affect the basic and novel characteristics of the claimed
composition. Appellants have “the burden of showing the basic or novel
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