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« Conference & CLE Calendar | Main | Could Alice Be Used to Invalidate Diehr? Of Course It Could »

April 18, 2021

Comments

I'm writing from Europe. Can somebody clarify something for me, because to me the law here seems trite.

Suppose the claim in issue is directed to a chemical compound, per se. Suppose there is a prior written publication,D1, published ten years before the date of the claim, that discloses that very compound but does not enable it. Ergo, it fails to destroy novelty. But how about obviousness? In the intervening ten years there was much technical progress. The Parties present evidence whether what D1 discloses is something that the skilled person could readily have manufactured already, prior to the date of the claim. Would (could) the outcome of that argument over enablement be decisive to the obviousness debate?

The statement of "In the intervening ten years there was much technical progress." holds the answer.

The answer does not -- and cannot - include the D1 reference, for the simple reason that D1, as if its critical date is nothing more than science fiction for the chemical compound.

It would be necessary to use whatever that later item is (and THAT item's critical date) that occurred in that intervening ten years to deny patentability on the basis of obviousness.

Will you accept this answer?

Well, I am:

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