Appeal 2006-2897
Application 10/074,715
agent and a detergent. However, there is no evidence of record that these
additional components would materially affect the composition of claim 12.1
In this regard, Appellants’ specification teaches that detergents
(“surfactants”) can be added, presumably without materially impacting the
claimed compositions. Further, while Appellants argue that serum proteins
(one of Steaffens’ blocking agents) would raise “potential storage stability
issues” (Br. at 6), the Examiner reasonably concluded that the antimicrobial
preservatives used by both Steaffens and Appellants would address any such
issues. See Ans. at 7. Thus, the Examiner reasonably concluded these
additional components would not materially affect the novel and basic
characteristics of Appellants’ claimed composition. In such a situation, and
given the difficulty the Office has in determining whether additional
components would materially affect a claimed invention, the burden is on
Appellants to make such a showing. They have failed to so do.2
The interpretation of claim 12 also requires us to consider the claim
language “being capable of preserving thyroid stimulating hormone.” The
situation is analogous to that relating to “consisting essentially of.” The
Examiner reasonably concluded Steaffens’ additional components would not
materially affect the basic and novel characteristics of the claimed invention.
It reasonably follows that Steaffens’ compositions inherently would be
1 Appellants argue these components are “important, as active ingredients,”
in Steaffens. Br. at 4. But that is not the test. See the discussion supra at
pp. 7-8.
2 Appellants further argue there is no teaching or suggestion “to omit the
serum protein and detergent.” Unless these components materially affect the
claimed invention, which Appellants have not shown, their omission is not
required.
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