Friday, October 07, 2011

CAFC tackles "consisting of" in In re Taylor

The CAFC noted:

This court agrees with the Solicitor. Taylor’s argument that the examiner misinterpreted the transitional phrase “consisting of” does not help him. Taylor misunderstands the nature of the examiner’s statement that “consisting of means those things listed and absolutely no others.” ’445 Application, Advisory Action (Apr. 15, 2010), J.A. 596. This statement was made in the context of a discussion relevant to the examiner’s § 112 rejection, not the §§ 102 and 103 rejections, evidenced by his statement immediately thereafter that “[y]ou cannot have a consisting of claim that allows for multiple, even potentially limitless additives . . . . To have a consisting of claim that may have all kinds of additives is both confusing and improper.” Id. As discussed in Part I, the Board reversed the examiner’s § 112 rejection, holding that one of ordinary skill in the art would understand the proper scope of the claim to be a cleaning solution that “consists of a hypochlorite salt, an alkali metal hydroxide, and an additive that is at least one member of the group consist- ing of chelating agents, phosphorous-containing salts, surfactants and abrasive agents.” Board Decision at 8.
The Solicitor is correct that the Board properly construed the “consisting of” claims to require one or more of the stated additives.


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