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« In re Kubin to Be Argued before the Federal Circuit on Thursday | Main | U.S. Chamber of Commerce Provides Detailed Recommendations to New Administration Regarding USPTO »

January 08, 2009

Comments

Court was being a bit of a jerk, as far as I can tell. As Gongola pointed out, the hypo in claim 11 has a critical distinction: the spec shows actual examples whereas Kubin simply grabs his large piece of the pie, giving the public a tiny tiny sliver in return.

The Example 11A-B difference is absurd. You can claim a variant when you don't have function, but cannot claim when you insert a function? If I have a protein with a function, why would I want to limit my claims to a specified function (+ variant). A peptide/protein variant without a function but has % identity should fail the utility requirement.

Prediction: FAIL,

This panel wasn't being "a bit of jerk," but very appropriately pointing out the inconsistency of the PTO's guidelines, before and then after the BPAI decision in Kubin. Gongola might have argued that the change reflected changes in the art and/or controlling Federal Circuit case law, but didn't. That makes the pane's discourse on this issue very relevant to whether the PTO is simply changing its standard for "written description" without any rational basis, and especially because changes in Federal Circuit case law.

Besides J. Rader, who else was on the panel?

Tim:

Judges Linn and Friedman, I believe.

Don

"The Example 11A-B difference is absurd. You can claim a variant when you don't have function, but cannot claim when you insert a function?"

What is absurd is to pay attention to the USPTO's "guidelines" when the bottom line is, and will always be, the CAFC.

Kubin hasn't satisfied the written description standard under CAFC case law. You sequence one known protein (as a prior art reference instructed) and you get a claim that covers a vector encoding a protein with only 80% similarity?!?

I have less of an issue with a claim to the single sequence, or any nucleic acid encoding that particular sequence.

But the idea that in the absence of ANY study of the protein's structure and tolerance for mutations that you could automatically get a claim drawn to 80% sequence similarity is absurd. In this case, the functional limitation is no more than a Rochester reach through.

C'mon. You guys are Ph.D.s. These guys sequenced a frigging protein that had previously been isolated and now they want to own the protein and EVERY functional mutant?

Greedy. Wrong.

Pointing to some silly PTO guidelines that one should always take with a grain of salt as some excuse for allowing the claim is ridiculous.

"This panel wasn't being "a bit of jerk," but very appropriately pointing out the inconsistency of the PTO's guidelines, before and then after the BPAI decision in Kubin."

The point is that everyone, including the panel, knows that PTO "guidelines" carry zero legal weight. So why is the court playing a silly "gotcha" game about them? Gongola handled it very well. His explanation in the third and fifth paragraph nails it. You'll note that it is at that point where the panel raises this irrelevant garbage about the "guideliness" and Gongola reminds the panel: the guidelines aren't rules, nor are they the law.

"The point is that everyone, including the panel, knows that PTO "guidelines" carry zero legal weight."

Predicition: FAIL,

Then why did the PTO even bother to issue the guidelines? Those guidelines may carry zero weight outside the PTO, but not inside it. The fact is, the PTO, including the Examiners and the BPAI, use those guidelines as the basis for rejecting claims for lack of compliance with the "written description" requirement. Otherwise, those guidelines completely mislead the public as to what the PTO's position is.

And the panel was quite correct to question Gongola as to why the change in those guidelines after the Kubin decision. It goes to consistency in PTO following its own Rules (or guidelines), as well as controlling Federal Circuit case for which there is a great deal of skepticism now. With what we in the patent prosecution bar have seen from the PTO recently in BPAI decisions, Rule packages, etc., there's a huge credibility gap now about whether the PTO operates within (or outside) its own rules (or guidelines), as well as controlling case law.

EG, your comment is interesting except it has nothing to do with the validity of Kubin's claims because the guidelines, no matter how often they changed during the course of Kubin's prosecution of his case, have nothing to do with validity of Kubin's claims.

As a **legal** matter, how do you respond to Gongola's arguments in paragraph 3 and 5 of the excerpt above?

Do you believe that the scope of those claims is proportional to Kubin's contribution?

After Kubin's claims are invalidated, perhaps Kubin may wish to sue the USPTO for misrepresentation. But neither Kubin nor any other applicant should be rewarded with broad claims failing to meet the STATUTORY requirements merely because the USPTO's "guidelines" changed during the course of prosecution.

I recognize that there is a problem with consistency at the USPTO. For every claim denied, one can almost always find some other applicant with similar facts whose claims were recently granted. But the solution of the problem is surely not to return to the days when broad, invalid claims were routinely granted, leaving the courts to sort it out and providing a playground for trolls and other manipulators of the system.

EG: "With what we in the patent prosecution bar have seen from the PTO recently in BPAI decisions, Rule packages, etc., there's a huge credibility gap now about whether the PTO operates within (or outside) its own rules (or guidelines), as well as controlling case law."

As a Ph.D., attorney and member of the patent prosecution bar who has prosecuted biotech patents for many years, it is my professional opinion that PTO is currently adhering more closely to Federal Circuit case law than it has since its inception, at least insofar as examination of biotech patents is concerned. In the past, it was far easier to bluster one's way past an Examiner or persuade an Examiner that granting one's claim was "the right thing to do" just because the client really needed the claims. There is less of that going on now. It's a good thing -- at least for "the public" (i.e., the real "public", not the micro-public consisting of patent attorneys, companies, start-ups and venture capitalists).

Prediction: FAIL,

I stand corrected that you are a member of the "patent prosecution bar." You may be correct that broad biotech patents were granted in the past. But, from what I've seen, that's not happening now.

This was awesome. I like the judge's reference to Gongola "smiling defense."

The comments to this entry are closed.

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