In a review filed by US company Slayback Pharma, LLC before the USPTO's Board of Appeal, the Patent Trial and Appeal Board (PTAB) considered the meaning of the transitional phrase "consisting essentially of" in Eye Therapies, LLC's patent. The patent claimed a method for reducing ocular congestion, characterized by "consisting essentially of administering to a patient brimonidine." In its ruling, the PTAB rejected Eye Therapies' argument that the claim should be limited to methods using brimonidine as the sole active ingredient, instead finding that the claim permitted the presence of other active ingredients capable of reducing ocular congestion. Based on this interpretation, the PTAB determined that the challenged claims were unpatentable due to obviousness. Eye Therapies subsequently appealed.
The Federal Circuit recently held that the PTAB erred in interpreting the phrase "consisting essentially of" due to a misapprehension of the examination history. The Circuit found that the applicant had modified "comprising" to "consisting essentially of" during the examination process to overcome a rejection. Because the applicant explicitly equated "consisting essentially of" to "the method does not include administering an additional active ingredient," and the examiner approved the patent based solely on this modification, the Federal Circuit held that the limitation should be changed. This review of the phrase "consisting essentially of" illustrates how small language changes in patent applications can have significant legal and commercial implications.
The details handled during the patent examination process, especially the fine-tuning of terminology, can determine the fate of the entire patent. This provides a valuable lesson for patent applicants: clear and precise language, as well as careful consideration of the consequences of changes made at every stage of the application process, are the cornerstones of ensuring patent approval.
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