About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

  • Enter your e-mail address below to receive the "Patent Docs" e-mail newsletter.

Enter your email address:

Delivered by FeedBurner

Contact the Docs

Docs on Twitter


Disclaimer

  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat_165
Juristat #8 Overall Rank

Pharma-50-transparent_216px_red

« Array BioPharma and Celgene to Collaborate | Main | Commissioner Doll Addresses ACI Biotech Patents Conference »

September 25, 2007

Comments

From example 3


"The presence of one novel and nonobvious sequence within the combination will render the entire combination allowable"

I don't understand. Why are the obvious + non-novel sequences permitted to be used in the kit? Isn't that infringement? Wouldnt it matter how the sequences are used together to 'allow the claim to the combination". What if they're used one at a time?

Baffled

Richard-
As a disclaimer to what I'm about to say, I did not listen to the PTO's webcast of this presentation, so my reasoning may not be totally on point.

I think the basis for this Example is that the claim is to the combination of sequences/primers, and for purposes of restriction, each sequence in such a combination is not considered "patentably distinct" (the invention is the combination of sequences as a kit, not each individual sequence). Thus, one novel sequence will impart novelty to the combination, sort of like a claim to a composition derives novelty (in many cases) from a new active agent, which is combined with known formulation agents.

The issues of novelty and obviousness will likely be hashed out later during prosecution, depending on the types of prior art references that exist. For example, art disclosing a kit with many of the same primers, or sequences used to target the same gene transcripts (orthologs/variants) as the recited primers, but still failing to disclose the novel primer(s) will likely become a topic of discussion between the applicant and Examiner (obviousness). Also, your point about "one at a time" is interesting but may go beyond the scope of this Example...the claim they use is to the kit itself, and not a method for using the kit.

I hope that helped at least a little. Thanks for the comment and thanks for reading.

The comments to this entry are closed.

August 2020

Sun Mon Tue Wed Thu Fri Sat
            1
2 3 4 5 6 7 8
9 10 11 12 13 14 15
16 17 18 19 20 21 22
23 24 25 26 27 28 29
30 31