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June 25, 2008


Thank you for the post. I read the Porro BPAI decision and am flabbergasted. Although I have not worked on this kind of claim for several years, this is the kind of rejection I was seeing, and I'm very sorry to see it succeeding with the Board (especially the biotech members of the Board). I hope that a resolution of Kubin will be helpful, but probably not; there has always been some tension between the obviousness standard and the written description standard for sequences, and for a long time practitioners were able to argue based on some quirky case law that biotech claims should get the better end of each argument. That is probably going to go away forever, but what will be left for sequence claims? Your tip to include consensus sequences is a good one, but given the way the PTO is applying the rules, I don't think that will help because the way they're articulating the rule, you're only going to get protection for the exact functional sequences you have disclosed in the application. If the rule of Porro is the final one, I don't see how anyone would be able to adequately protect an invention based on a sequence, since a design-around of a claim to an exact sequence is less than trivial. Hopefully the argument will be made that the standard being applied here to sequences is inconsistent with the standard as applied to other arts, and that Enzo and Lilly are inapt (as a special case and as one reciting only function, respectively) and common sense will prevail. Otherwise good luck to the industry in getting a legislative solution.

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