Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 2100 – Patentability (2)
The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:
“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”
Key differences:
- “Comprising”: Open-ended, allows for additional, unrecited elements.
- “Consisting of”: Closed, excludes any element not specified in the claim.
- “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.
For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.
When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.
To learn more:
The choice between ‘consisting of’ and ‘comprising’ in Markush groups is crucial as it affects the scope of the claim. According to the MPEP 2173.05(h):
“A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group ‘consisting of’ (rather than ‘comprising’ or ‘including’) the alternative members.”
‘Consisting of’ creates a closed group, limiting the claim to only the listed alternatives. ‘Comprising’, on the other hand, creates an open group that may include unlisted elements. The MPEP advises:
“If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group ‘comprising’ or ‘consisting essentially of’ the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim.”
Therefore, ‘consisting of’ is generally preferred for Markush groups to ensure clarity and definiteness.
To learn more:
MPEP 2111.03 – Transitional Phrases (1)
The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:
“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”
Key differences:
- “Comprising”: Open-ended, allows for additional, unrecited elements.
- “Consisting of”: Closed, excludes any element not specified in the claim.
- “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.
For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.
When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.
To learn more:
MPEP 2173.05(H) – Alternative Limitations (1)
The choice between ‘consisting of’ and ‘comprising’ in Markush groups is crucial as it affects the scope of the claim. According to the MPEP 2173.05(h):
“A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group ‘consisting of’ (rather than ‘comprising’ or ‘including’) the alternative members.”
‘Consisting of’ creates a closed group, limiting the claim to only the listed alternatives. ‘Comprising’, on the other hand, creates an open group that may include unlisted elements. The MPEP advises:
“If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group ‘comprising’ or ‘consisting essentially of’ the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim.”
Therefore, ‘consisting of’ is generally preferred for Markush groups to ensure clarity and definiteness.
To learn more:
Patent Law (2)
The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:
“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”
Key differences:
- “Comprising”: Open-ended, allows for additional, unrecited elements.
- “Consisting of”: Closed, excludes any element not specified in the claim.
- “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.
For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.
When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.
To learn more:
The choice between ‘consisting of’ and ‘comprising’ in Markush groups is crucial as it affects the scope of the claim. According to the MPEP 2173.05(h):
“A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group ‘consisting of’ (rather than ‘comprising’ or ‘including’) the alternative members.”
‘Consisting of’ creates a closed group, limiting the claim to only the listed alternatives. ‘Comprising’, on the other hand, creates an open group that may include unlisted elements. The MPEP advises:
“If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group ‘comprising’ or ‘consisting essentially of’ the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim.”
Therefore, ‘consisting of’ is generally preferred for Markush groups to ensure clarity and definiteness.
To learn more:
Patent Procedure (2)
The phrase “consisting essentially of” occupies a middle ground between the open-ended “comprising” and the closed “consisting of” in patent claims. According to MPEP 2111.03:
“The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention.”
Key differences:
- “Comprising”: Open-ended, allows for additional, unrecited elements.
- “Consisting of”: Closed, excludes any element not specified in the claim.
- “Consisting essentially of”: Partially open, allows only those additional elements that do not materially affect the invention’s basic and novel characteristics.
For example, “A cleaning composition consisting essentially of ingredients X, Y, and Z” would allow for minor additives that don’t significantly change the cleaning properties, but would exclude major components that alter its fundamental nature.
When using or interpreting “consisting essentially of,” it’s important to refer to the specification to understand what constitutes a material change to the invention’s basic and novel characteristics.
To learn more:
The choice between ‘consisting of’ and ‘comprising’ in Markush groups is crucial as it affects the scope of the claim. According to the MPEP 2173.05(h):
“A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group ‘consisting of’ (rather than ‘comprising’ or ‘including’) the alternative members.”
‘Consisting of’ creates a closed group, limiting the claim to only the listed alternatives. ‘Comprising’, on the other hand, creates an open group that may include unlisted elements. The MPEP advises:
“If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group ‘comprising’ or ‘consisting essentially of’ the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim.”
Therefore, ‘consisting of’ is generally preferred for Markush groups to ensure clarity and definiteness.
To learn more: