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Author Topic: How can "consisting of" be written to be not less protective than "comprising"?  (Read 641 times)

memekit

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1.  A method of treating diseases responsive to 7RY inhibition consisting essentially of administering to a subject in need thereof a therapeutically effective amount of RTB12 at about 0.01 wt% to 20 wt% and which is free of other parent plant compounds.

2.  The method of claim 1 whereby said RTB12 may further be combined with any other logical agents to treat said diseases whereby said agents may be a, b, c, ... x, y, z (list all other 7RY inhibitor compounds that were in the specs).

So if claim 1 was used to overcome inherency by using consisting-of, could the dependent claim 2 mostly cover what the consisting-of left open for infringement? 

I read about a consisting-of case involving oil pipe coating (I think) whereby the infringer argued that since the patent said "consisting of X" and his use of X contained some impurities/pollutants that it was not infringing, but he still lost. 
So I was wondering, if there was a way in the original patent if they'd written "A method to reduce oil pipe friction consisting essentially of coating said pipe with X." could be mitigated, like my potential claims above, by having a dependent claim which stood in place of comprised of?  I don't know why they'd choose consisting versus comprised whereas in my case I have to to overcome drug-in-natural-product inherency ... but through a dependent claim could the IP value be enhanced through such a dependent claim? 
Thanks for any opinions
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bluerogue

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See MPEP 2163 "for the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising."

So your claim will likely still be interpreted as comprising.

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The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.

memekit

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I did not know that!  It will be interesting to see how my examiner reacts to this amendment.  We did discuss 'consisting of' but when I looked into it the recommendation seemed to be "consisting essentially of" and that most US patents use that...without appreciating the different interpretations of it.  All along I'd been reading that comprising was the superior term.  Thank-you.
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eighteighteight

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I have not dealt with chemical cases in a long time, but are you sure your claims are definite?

Apologies if these are just abbreviated claims, or if I missed some trends in claiming in the pharmaceutical arts, but you may want to consider claiming this as: "A method comprising administering to a subject in need thereof a pharmaceutical composition, wherein the composition comprises (consists essentially of) RBT, wherein the composition is about 0.01 wt% to 20 wt% RBT, and wherein the pharmaceitual composition is free of other parent plant compounds." Then "wherein the composition further includes..."

There is also a problem that if you mean "consisting of" (closed group), then you CANT have it only be 20 wt%, because by definition additional elements are required that are not listed in the claim, which obviously is a problem if you are claiming a closed group.
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memekit

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Yes, good point about the other 80%, but I was thinking that would be inert excipients, but you're right that should be specified.  Thank-you.

I also learned that unless the spec said "consisting essentially of" that this phrase cannot be used in the claims, whereas "consisting of" can be...or that's what my Examiner said to me at least.
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