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.

Contact the Docs


  • "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 #8 Overall Rank


« BIO Gives President-elect Obama Its Ideas on Patent Reform | Main | Kubin Panel Questions Motivation behind Reversal in New Written Description Training Materials »

January 07, 2009



Looking forward to your report on the oral argument later. Didn't realize that Kubin also had a "written description" requirement issue. Another "legal quagmire" created by the Federal Circuit and the BPAI.

Thanks for the article. I am not convinced one can say "art taught affirmatively that the gene was not expressed in the tissue source of the cDNA used by applicants" based on a mouse ortholog hybridization experiment.

"At issue is the question of whether the existence in the prior art of a purified protein, combined with "routine" cloning methods, renders obvious a claim to a nucleic acid encoding the protein."

This is a strange case to be presenting this issue because the claim covers not just "a nucleic acid encoding the protein" but gazillions of nucleic acids encoding millions of different proteins, including many proteins whose amino acid sequence is unknown to applicants.

What policy reasons justify extending a lengthy monopoly of this broad scope to applicants who merely steps EXPRESSLY suggested by the prior art (i.e., sequencing the protein at issue using well-known, routine techniques) to achieve only what the art predicted (i.e., a sequence encoding the protein at issue, from which all coding nucleic acid sequences are immediately deducible)?

One can distinguish Kubin from Deuel: the broadest claims at issue in Deuel concerned the obviousness of a genus of nucleic acids that encoded a SPECIFIC protein. The broadest claims at issue in Kubin concerned a GENUS of nucleic acids that encode a GENUS of proteins. In Deuel, the court said something like that which cannot be contemplated or conceived cannot be obvious. In Kubin, possibly one could have envisioned some member of claimed genus, and thus the claimed genus comprising that member would have been obvious. Conspicuously not at issue in Kubin was claim 79, which perhaps claimed a species and therefore, under Deuel, would not have been obvious.

Great article
keep it up.

The comments to this entry are closed.

May 2024

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