In re John Ngai and David Lin (Fed. Cir. May 13, 2004)
Ngai invented a new method for amplifying and normalizing RNA and submitted a patent application for his invention.
The Patent Board rejected Claim 19, which was drawn to a kit with printed instructions for performing the method. The Federal Circuit affirmed the Patent Board’s rejection of the claim.
All that the printed matter does is teach a new use for an existing product. As the Gulack court pointed out, “[w]here the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” Id. If we were to adopt Ngai’s position, anyone could continue patenting a product indefinitely provided that they add a new instruction sheet to the product. This was not envisioned by Gulack. Ngai is entitled to patent his invention of a new RNA extraction method, and the claims covering that invention were properly allowed. He is not, however, entitled to patent a known product by simply attaching a set of instructions to that product.