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« EMA Continues to Defer Approval of First Gene Therapy Application in Europe | Main | Boston Scientific Corp. v. Johnson & Johnson (Fed. Cir. 2011) »

July 26, 2011

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Comments

In Schwarz v. Paddock, the applicants surrendered the territory between "metal salts" and "metal carbonates", in view of an obviousness rejection over a reference disclosing magnesium stearate (which is not an alkaline stabilizer). That's a lot of territory to surrender, but the specification contained little support for claims of intermediate scope that might have excluded magnesium stearate while still encompassing the equivalent (MgO) that the accused infringer was using. (Good patent drafters should be familiar with the lesson taught.)

What's bothersome to me is the needlessly cramped interpretation of the Supreme Court's phrase, "the rationale underlying the amendment may bear no more than a tangential relation to the equivalent in question." The C.A.F.C. gives lip service to this grounds for rebuttal, before proceeding to apply a "for reasons of patentability" test to the amendment, with no analysis whatsoever of the "relation to the equivalent in question." The prior art did not render MgO any more obvious than it did the metal carbonates, and there's simply no rational reason to discard the DoE in such a case.

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