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

Disclaimer

  • "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_165
Juristat #8 Overall Rank

Pharma-50-transparent_216px_red

« Reaction to the Passage of the Innovation Act (H.R. 3309) | Main | News from Abroad: EPO Clarifies Extent to which Methods Involving Use of Human Embryos Are Excluded from Patentability »

December 10, 2013

Comments

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...

The comments to this entry are closed.

February 2025

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