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« BIO Gives President-elect Obama Its Ideas on Patent Reform | Main | Kubin Panel Questions Motivation behind Reversal in New Written Description Training Materials »

January 07, 2009

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Kevin,

Looking forward to your report on the oral argument later. Didn't realize that Kubin also had a "written description" requirement issue. Another "legal quagmire" created by the Federal Circuit and the BPAI.

Thanks for the article. I am not convinced one can say "art taught affirmatively that the gene was not expressed in the tissue source of the cDNA used by applicants" based on a mouse ortholog hybridization experiment.

"At issue is the question of whether the existence in the prior art of a purified protein, combined with "routine" cloning methods, renders obvious a claim to a nucleic acid encoding the protein."

This is a strange case to be presenting this issue because the claim covers not just "a nucleic acid encoding the protein" but gazillions of nucleic acids encoding millions of different proteins, including many proteins whose amino acid sequence is unknown to applicants.

What policy reasons justify extending a lengthy monopoly of this broad scope to applicants who merely steps EXPRESSLY suggested by the prior art (i.e., sequencing the protein at issue using well-known, routine techniques) to achieve only what the art predicted (i.e., a sequence encoding the protein at issue, from which all coding nucleic acid sequences are immediately deducible)?

One can distinguish Kubin from Deuel: the broadest claims at issue in Deuel concerned the obviousness of a genus of nucleic acids that encoded a SPECIFIC protein. The broadest claims at issue in Kubin concerned a GENUS of nucleic acids that encode a GENUS of proteins. In Deuel, the court said something like that which cannot be contemplated or conceived cannot be obvious. In Kubin, possibly one could have envisioned some member of claimed genus, and thus the claimed genus comprising that member would have been obvious. Conspicuously not at issue in Kubin was claim 79, which perhaps claimed a species and therefore, under Deuel, would not have been obvious.

Great article
keep it up.

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