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December 10, 2013


Claim 1 is "An isolated adipose-derived stem cell that can differentiate into two or more of the group consisting of a bone cell, a cartilage cell, a nerve cell, or a muscle cell." Claim 12 is similar in concept.

The applicant is claiming all adipose-derived stem cells of any nature and processed by any means (including unknown means) that can differentiate into multiple types of cell. This sounds a lot like Morse's claim 8.

Why didn't the Board sua sponte address this supposedly "threshold" issue? If it did, what do you think the result should be?

(Incidentally, the linked WARF case, as written up here, does not seem to mention sec. 101.)

Is a hammer (assuming novel and non-obvious) any less an invention if it can be manufactured by any means including unknown means?

This sounds nothing like Morse's claim 8.

Thanks, Richard - in fact, the correct citation was to Don's August 1, 2013 post. We will fix that.

As to the scope issue. I think this illustrates the difference between composition and method claims. Method claims raise preemption issues because "any way of performing the method" is clearly over broad - Morse's claim 8. But it has always been the case that all you need to do is show someone one way to make a composition, not all ways - and that after-arising ways of making the composition permit you to claim the method but not the composition - the Cochrane case, for example.

The counter to your objection, Richard, is that this feature of composition claims renders them susceptible to anticipation rejections (including inherent anticipation), which is what the Board determined in this case.

Of course, had I thought about this the post would have been more interesting, so thanks for bringing it up.

Dr. Noonan,

That has to be the most polite way that I have ever seen someone tell someone else that they are wrong.

One problem though with such politeness, is that the person may not recognize their error.

In this case, one can wonder if even recognition would matter though, and of that I remain...

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