By Robert Dailey --
The Intellectual Property Owners Association (IPO) has finally weighed in on the new Markush rules that were released this August (see 72 Fed. Reg. 44992 (Aug. 10, 2007); "Patent Office Proposes New Rules for Alternative Claiming").
The comments center on two themes: (1) that the new rules have the unwanted effect of increasing Examiner workload; and (2) that the rules unduly limit inventors' abilities to define the nature of their inventions. Specifically, the IPO makes the following comments regarding each proposed rule change.
I. Single invention explanation
The new rules encourage applicants who submit alternative claims to provide an explanation as to why the claim is directed to a single invention. The PTO suggests that applicants may do this in one of two ways: (1) explain that the species share a substantial feature of common utility; or (2) explain that the species are prima facie obvious over each other.
The IPO points out that the second of these options leads the applicant directly into a trap. In re Ruff, 118 U.S.P.Q. 340, 347 (C.C.P.A. 1958), states: "[t]o rely on an equivalence known only to the applicant to establish obviousness is to assure that his disclosure is a part of the prior art." In other words, if applicants admit that their species are prima facie obvious over each other, then they could not excise an anticipated species from the list of alternatives.
II. Long lists of named compounds
The new rules permit Examiners to reject claims directed to large lists of named compounds. Under such a rejection, the Examiner would reject the claim and ask the applicant to present a common structural feature of the listed compounds. IPO suggests that applicants may avoid the effect of this rule by claiming lists of structures rather than lists of names.
III. Single invention rule of 37 C.F.R. § 1.75(a)
The new rules would prevent Examiners from examining claims that contain more than one invention. IPO suggests that the rule should be permissive, allowing Examiners the liberty to examine multi-invention claims if it would pose no undue burden on the PTO. The rules should not force Examiners to reject claims that can easily be examined. This would have the unwanted effect of increasing the PTO's workload.
IV. "Difficult to construe" rule of 37 C.F.R. § 1.75(j)(1)
The new rules permit alternative claiming only when "[t]he number and presentation of the alternatives in the claim does not make the claim difficult to construe." IPO rejects this rule as too vague. No standard is provided for "difficult," and applicants are given no basis upon which they can rebut a determination that their claims are difficult to construe.
V. Nested alternatives ban of 37 C.F.R. § 1.75(j)(2)
The new rules provide that "no alternative be defined as a set of further alternatives within the claim." IPO points out that nesting often shortens claim length, and places limits on the manner in which applicants can claim their inventions. In place of the rigid ban, IPO recommends that Examiners be permitted to review nested claims unless the examination would be unduly burdensome.
VI. Double inclusion ban of 37 C.F.R. § 1.75(j)(3)
The new rules require that no alternative be encompassed by another alternative within the list of alternatives. IPO accepts this rule as consistent with existing PTO practice.
VII. "Substitutable for one another" rule of 37 C.F.R. § 1.75(j)(4)
The new rules requires that each alternative in a list be substitutable for the other alternatives. IPO rejects this rule as a contradiction of M.P.E.P. § 2173.05(h):
Where a Markush expression I applied only to a portion of a chemical compound, the propriety of the grouping is determined by consideration of the compound as a whole, and does not depend on there being a community of properties in the members of the Markush expression.
The new rule would encourage the PTO to ignore what one knows about the molecule as a whole. For example, an R-group at the active site of a drug would be judged no differently than an R-group on a side chain. IPO suggests that this rule be rejected in favor of the current practice outlined in M.P.E.P. § 2173.05(h).
VIII. Rule 140: "Substantial feature essential for a common utility"
The new rules require that an alternative claim "share a substantial feature essential for a common utility." Otherwise, the claim is deemed as containing multiple inventions. Although the PTO purports to rely on In re Harnisch, 631 F.2d 716 (C.C.P.A. 1980) for this rule, IPO points out that Harnisch never recites such a requirement. Furthermore, IPO sees the rule as vague, and asserts that the rule offers no advantages over current practices for defining a single invention (i.e., that a single invention is one that is independent and distinct).
For additional information on this topic, please see:
if a functional feature could be a "substantial feature" then the new rules wouldn't be such a problem. However, even if those of skill in the art recognize and refer to functional features the PTO effectively requires it to be tied to a strucural feature, which in many cases cannot be done as their is no structure common to all the members.
Posted by: anon | October 31, 2007 at 08:19 AM