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September 25, 2007


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?


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.

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