In re Gleave: Reference with Unknown Utility Still Anticipates

In re Gleave (Fed. Cir. 2009)

In 2008, the BPAI affirmed the examiner’s rejection of Gleave’s claims as anticipated. The claims focus on an antisense oligodeoxynucleotide designed to bind two different types of insulin-dependent growth factor binding protein (IGFBP). The prior art included a document that listed the genetic sequence of the complementary sense strands but did not identify any utility of the sequence.

On appeal, the Federal Circuit affirmed the anticipation rejection – basing its decision on the rule that anticipatory prior art does need to be functional, useful, or show actual reduction to practice. Rather, to be anticipatory, the prior art must enable the skilled artisan to make the claimed invention.

In the 1973 Wiggins case, the CCPA ruled that the “mere naming of a compound in a reference, without more, cannot constitute a[n anticipatory] description of the compound.” The Federal Circuit here distinguished Wiggins – noting that in Gleave’s case, the sequence listing was sufficient to allow a skilled artisan to “at once envision each member of this limited class.”

Notes:

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

52 thoughts on “In re Gleave: Reference with Unknown Utility Still Anticipates

  1. I don’t know why I changed 800 to 200 in my previous example, but I believe the only responders got it. For the record, I meant 800.

  2. Max,

    Thanks for your comments. Looks like you had some coffee. But now, Cheers, Auf uns!

  3. Shame that you have no time IBP, because I’m here to learn. Sorry to react ungraciously to your gracious remarks but I think I do know the difference between “inarticulate” and “logically flawed”. Are you sure your problem with what I write is that it’s “inarticulate”? Maybe your real problem is with the alien civil law system that the rest of the world uses? Anybody out there who wants to comment on the role of witness evidence, when one challenges the validity of a patent “duly issued” by the EPO?

    The posts in my name are from me. Not sure whether any is “ad Hominem” though. I’m not distracting attention from the matter in hand by attacking something like the degree of eloquence of the opiner. Instead, I am out to establish for interested readers how much reliance they should put on my comments, and how much on yours.

  4. Dear inviting body punches,

    Thank you – you made my day.

    And notwithstanding my comments about Max, I think he is smart and a swell guy. My guess is that he sometimes goes too heavy on the Schnapps. So do I. IP is a tough business – if it wasn’t, I’d lose interest.

  5. Strange to see Max go ad hominem–I’m wondering if his last post was in fact from him.

    In any case, I have neither the time nor the desire to here educate on Argumentation and Advocacy 101. It is the philosophical underpinnings of arg&adv that reveal Max’s statement to be inarticulate in any rational system of inquiry, “civil” or “common law”.

  6. My understanding of anticipation, structural limitations and functional limitations is the same as Mooney’s.

    I do think it matters upon what basis claims are invalidated, though, if for no other reason than to develop coherence and consistency within the body of patent law.

  7. JAOI–

    I read Max’s comments on this blog, and notwithstanding his european boosterism, I find that he has supplied valuable and helpful commentary.

    Until now.

    That assertion–classic! It needs no further discussion–it speaks for itself.

    I think Max probably looks back upon it with regret–maybe he’ll come back to clean it up. Most blog contributors have at some point blurted something unfortunate, and I certainly will never hold this against him when reading his future posts.

    On another topic, I have read your ongoing criticism of eBay and your lament of the state of independent inventors in the US. I feel your pain.

    I don’t think many people see the multiple dimensions of patent law, and of IP in general. In a way, in an ideal implementation, IP can be viewed as a democratization of property. An entirely new class of property, IP, is created, to which people have access who may be denied access to other forms of property due to unfortunate history, lineage, monetary status, etc..

    The capital required to gain IP rights is a form of wealth in itself–it can be the capital of individual knowledge, individual aspiration, individual perception, individual work, etc. in the case of the individual inventor. Property he/she can buy with something other than money and position.

    Of course, it takes some funds to gain these rights and to exercise them gainfully, but the opportunity is there for the ordinary individual to share in the spoils. That is one reason that I may be in favor of the expansion of the scope of IP and sympathetic to your conclusion that eBay is unconstitutional regarding injunctions.

  8. So, Max is hilariously inarticulate is he? Glad I’m providing entertainment for you two, but I suspect other readers (Mooney for example) do know what I’m on about. Readers, you know what, I suspect that neither JAOI nor IBP has much experience of litigation outside any common law jurisdiction. Globally, common (English) law is the exception. Civil (Roman) law is the rule. In patent litigation, start from the premise that your tribunal is deemed to be a PHOSITA. In addressing such a tribunal, would you venture evidence of what the PHOSITA knows and thinks, or would you perhaps instead try argument, PHOSITA to PHOSITA? Am I still beyond your comprehension? Are you still thinking that this is all a feeble attempt to tell a joke?

  9. “A claim to a car that goes 200 mph would definitely survive a 102 because the PTO would not be able to point to one that does.”

    Yes, but I believe that the PTO could legally ignore the limitation as purely functional and therefore non-limiting.

    The only people who would object are formalist extremists who object EVERY TIME a crappy claim is invalidated for “the wrong reason.” In fact, it makes no difference whether the claim is invalidated as non-enabled or anticipated. Crap claims are crap claims. And any claim in the form “A car, wherein said car [has previously untaught capability X], period” is a crap claim.

  10. Dear Inviting body punches,

    We in my office are still searching for some meaning.
    If it was meant to be a joke, I don’t get it.

  11. I find Max’s comment that “Common law countries use ‘evidence’ to decide cases, whereas civil law countries do it with ‘arguments’.” to be hilariously inarticulate.

  12. Good question JAOI. Common law countries use “evidence” to decide cases, whereas civil law countries do it with “arguments”. My position is that PSA is an obviousness “code”, “approach” or even “philosophy” which can work wonders in both common law and civil law jurisdictions, using “evidence” and “argument” to the extent allowed or required in that particular jurisdiction. Not sure that helps you much but…there you go.

  13. Hi JAOI, you can forget PSA if you want (although having a working knowledge of it will help you with your own EPO cases). For me, your logic is flawed. PSA-ers are up there with you, in agreeing, wholeheartedly, that patentability is not to be negatived by the way the real inventor made his unique invention. Your pet issue never arises in Europe because PSA fundamentally excludes subjective considerations. This whole Agrevo thing is an objective test, using the construct of an imaginary person skilled in the art, who is presumed to have special knowledge of the state of the art, is to be preumed to be working on some objective technical problem, and is presumed to have zero capacity for inventive thinking. The whole PSA construct is simply a framework to have a debate about a “gap” between the art and the claim, and whether it was “obvious” to jump that gap. It offers the same prospects of success to both sides of the argument. The higher “quality” line of argument wins.

    Are there any other criticisms of PSA, besides the spurious one you continue to make? How does your criticism actually lead in real life to wrong results in Europe? Have you got your EPO cases to issue yet? How good were the claims? PSA is not going to go away.

  14. This clears the way for quiet shotgun references — dump a combinatorial list to CD-ROM and deposit it in your local library per In re Hall. You can read more about how this affects oligonucleotide claims in Artful Prior Art and the Quality of DNA Patents, 57 Ala. L. Rev. 975 (2006) (click on my name for the PDF).

  15. “No, you said it would get past 102 and that statement was what I was objecting to. You seem to be implying that I need merely to recite some property or function not described in the prior art and it’s equivalent to a “get out of 102 free card.” That’s a cheap card.”

    That’s precisely how it works right now. A claim to a car that goes 200 mph would definitely survive a 102 because the PTO would not be able to point to one that does.

  16. broje: “Seems to me that you are attempting to move the goalpost by splitting hairs over what “functional language” is”

    LOL. Functional language is language that describes a function. Structural language is language that describes structural or compositional differences. Is that “splitting hairs”? Because those are the definitions I had in mind when I addressed Dennis’ comment (still as dubious now as it was when I first questioned it upthread) and also when I plainly demonstrated that you were having difficulty keeping the two concepts straight.

    Maybe you just need to take a nap.

  17. So, Max, can we once and for all time forget the stupidity of EPO’s PSA?

  18. @ MM

    Seems to me that you are attempting to move the goalpost by splitting hairs over what “functional language” is and limiting it to precisely the magic words that are disallowed.

    Neither Dennis, Lane, nor I ever said anything along the lines of the strawman argument you are attacking. As Pat Docs says, “What was not anticipated by the cited art are methods of using these oligonucleotides, and the Court suggested that Gleave might be entitled to such claims.” But as soon as Dennis said, “A claim by Gleave with functional language might not have been anticipated by the prior disclosure of the bare sequence,” you were all over him. And the same with Lane when he pointed out your erroneous assumptions. And now that I am pointing out that composition claims can be also be obtained by expressing the functional limitaion in the form of a de minimus structural limitation, you are continually more narrowly reframing the issue.

    Since I have actual work to do, I will concede that under this extremely narrow framework you have invented, where we said whatever you wish we had said, you are right and everyone else is wrong. Happy?

  19. Max,

    Re: “TSM was too simple”

    No, no, no!, most emphatically no. We’ve been through this more than once. TSM was PERFECT because it required some form tangible evidence to kill a patent. PSA and KSR suck!, because they allow, nay, they invite, subjectiveness!, and that’s why they really really suck!

    The stuffing got knocked out of TSM not because it was too simple, but because our Supremes were too simple-minded regarding this most essential patent dilemma – how to determine if an invention is obvious. TSM is the only way!, and, having studied this matter up close, I know this to be best “obviousness” test to date!

    Our Supreme Court mucked it up with KSR at the anonymous behest of Cisco and their ilk in the cartel known as the Coalition for Patent Fairness through their illegal lobbying and blasphemous “global-community-bulldung” propaganda.

    And PSA is terrible, as I previously wrote after you directed me to read your reference, i.e., Agrevo T_0939/92, 2.4.2 in support of PSA – well Just the opposite:

    “… In other words, the notional ‘person skilled in the art’ is not to be assumed to seek to perform a particular act without some concrete technical reason: he must, rather, be assumed to act NOT OUT OF IDLE CURIOSITY but with some specific technical purpose in mind.”

    Thus, Agrevo’s 2.4.2 is in direct tension with 35 U.S.C. 103:

    “… Patentability shall not be negatived by the manner in which the invention was made.”

    In my on-going study of Just how does an inventor invent stuff, I found the “IDLE” CURIOSITY IS A MOST PRODUCTIVE KIND OF CURIOSITY – I have patents comprised of hundreds of claims that resulted from my “idle curiosity.”

    Curiosity, whether idle or not, is a powerful inventive tool.

    I also have patents comprising hundreds of claims that resulted from my intense research, 20 hour work days, over extended periods, even years.

    In other words, inventions can occur any time a curious person is idly thinking, sort of like a flash of genius. INVENTIONS SHOULD NOT BE NEGATIVED BY THE MANNER IN WHICH THE INVENTION WAS MADE.

    And please don’t forget the 5 ½ inch plate: After a long tortured dialogue, you gave up saying, “Jaoi, let’s forget the st00pid plate” (your own plate testpiece!).

    link to patentlyo.com

  20. Broje, I think MM was alluding to European “Use” claims, as in:

    Use of chemical compound XYZ, as a friction-reducing additive to motor oil.

    when the state of the art already includes the use of molecule XYZ as a corrosion inhibitor, in the self-same motor oil.

    As I understand your specimen claims, with XYZ part of the prior art they would go something like:

    A blood-thinning composition including XYZ, or

    Animal feedstuff, containing XYZ.

    Both the feedstuff and the blood thinner would be new compositions of matter, and not obvious. But how about the EPO use claim recited above? What do you think about the patentability of a novel “use” of an old molecule?

    Incidentally, I do discern that MM has some working knowledge of these things.

  21. “an animal feed and an effective amount of (old compositions) contained therein for growth simulation.”

    Nobody would argue that such composition is anticipated by the old composition, but that is because “animal feed + old composition” is **structurally** distinct from the “old composition.” You have not merely added a functional limitation to the old composition. You have created (and claimed) a new composition that comprises the old composition.

    So again: my earlier comment was not erroneous. It was correct. You were wrong, and now you are just digging a hole, kicking up dust, and acting like a m0r0n who can’t tell the difference between a structural limitation and a functional limitation.

    Please stop.

  22. MM said, “I’m still not seeing where my original comment was erroneous. If you disclose composition X and state that it is useful for washing monkey tails, it anticipates my claim to composition X, regardless of any functional limitations I add to the claim. We all agree that I can add structural limitations to the claim to avoid anticipation. But I can’t avoid anticipation by adding a clause to the claim that merely describes a new use for the composition, regardless of how fantastic the new use is.

    In Europe, maybe. But not in the United States.”

    I disagree. If you find that the compound previously used to wash monkey tails is useful as an animal feed additive, you can claim “an improved growth stimulating composition for animals which comprises: an animal feed and an effective amount of (old compositions) contained therein for growth simulation.”

    Similarly, if you find it useful as a blood thinner, you should be able to claim something along the lines of, “an improved blood thinner which comprises: a medicinal medium and an effective amount of (old compositions) contained therein for thinning of blood.”

    To me, Gleave stands for the prinipal that, if the compound is known, but no use for that compound is known, the peson who discovers the first utility for the compound cannot then claim the compound per se. They can only claim it for that particular use. In contrast, the person who first enables the making of the compound can claim it per se, and can claim any known use at that time. Then the person who discovers another use for the compound can claim it for that use. That second patentee has a servient patent to the first patentee’s dominant patent. Neither can use the compound for the second use without the other’s permission.

    What is still not entirely clear to me is if the person who enables the making of the compound but knows no use for it at all can get a patent on the compound per se. Is the utility requirement fulfilled? I would think not. But then the person who finds the first use for it does not get the have a claim to the compound per se. So no one gets that claim, I would think, if it has no use when first enablingly disclosed.

  23. Hi JAOI, glad you enjoyed House of Cards. The difference between PSA and TSM is that somebody recently knocked the stuffing out of TSM, but nobody’s laid a blow on PSA yet. Can you look up the famous quote (was it Mark Twain again, or maybe A. Einstein?) who said one should reduce everything to its irreducible minimum of complexity, but no further? TSM was too simple.

  24. Dear Max,

    Re: “Wouldn’t it be nice to have a grand unifying theory of obviousness?”

    We had one, “Teaching, Suggestion, Motivation,” TSM, which was based on some reasonable evidence to the contrary, until our Supreme Court mucked it up with KSR at the anonymous behest of Cisco and their ilk in the cartel known as the Coalition for Patent Fairness through their illegal lobbying and blasphemous “global-community-bulldung” propaganda.

    I have some bottom, and I dam sure put a bit of stick about.

    link to francisurquhart.blogspot.com

    THE RT HON. FRANCIS URQUHART MP
    You see, the trouble with politics today is that no one has any backbone. No one has any bottom, and no one is willing to put a bit of stick about.

    And, unlike PSA, Teaching, Suggestion, Motivation, TSM, can be explained in one sentence of 25 words or less.

  25. To get back to the original topic, where there is also recent caselaw in Europe, I think it’s an interesting debate whether a claim to one isolated enantiomer is both novel and non-obvious, when the state of the art included the racemic mixture. Everybody knew what the enantiomer was, and that it was present, but nobody could separate it. Then Inventor teaches how to separate it and claims not just the method but also the enantiomer (E) as such. The claim to E is novel and enabled, but is it obvious? Answer (in both Europe and the USA): not if E delivers unexpectedly good performance. My gut tells me that Inventor should get a monopoly on the method and on the use of E for the application where the performance is surprisingly good (treating disease Y). But it troubles me (and maybe much of the world south of the Equator) that Inventor gets a monopoly for the next 20 years, on the molecule per se. I’m told it doesn’t matter, because the only thing E is good for is to treat disease Y. All the same, it ain’t right. Exactly because it “doesn’t matter” it wouldn’t hurt big pharma to bring chemistry in line with the rest of the patent world, on non-obviousness. Wouldn’t it be nice to have a grand unifying theory of obviousness?

  26. “You seem to be implying that I need merely to recite some property or function not described in the prior art and it’s equivalent to a “get out of 102 free card.” That’s a cheap card.”

    I agree, but if you enable 800 mph on land you deserve to get out of 102 imho. If you also drive that car at 800 mph I will give you a high five before you probably die.

    “So what is the theory of patentability here? If something has an awesome function or property I get to claim it generically with a recitation of the function or property? Is it because I’m a “pioneer”?”

    The theory is that the courts created some all but counter to the statute bs relating to functional language and has never gotten rid of it, whilst considering it “well settled law” no doubt.

    “Recitation of a function in a composition claim, without reference to the novel structural features that effect that function, should be a non-starter.”

    Idk, if they were the first to enable that function then it seems ok to me. At least in a product, maybe things might be different for a composition, I’m really not close enough to those arts to have a feeling on the subject.

  27. 6: “Did I say that it passes 103?”

    No, you said it would get past 102 and that statement was what I was objecting to. You seem to be implying that I need merely to recite some property or function not described in the prior art and it’s equivalent to a “get out of 102 free card.” That’s a cheap card.

    “Enable that and I’ll personally see to it that you get a patent the day you apply”

    So what is the theory of patentability here? If something has an awesome function or property I get to claim it generically with a recitation of the function or property? Is it because I’m a “pioneer”?

    That sounds like old-school PTO slop to me. I strongly disapprove. Recitation of a function in a composition claim, without reference to the novel structural features that effect that function, should be a non-starter. It’s a form of begging.

  28. “Are you telling me the PTO would issue a claim to a “A car, wherein said car can go faster than 800 mph”?”

    Did I say that it passes 103? For the most part you disregard the difference between 101, 102 and 103, but for the purpose of discussion you may as well recognize it on occasion.

    If you want to make the example a patentable claim then let’s make the example a car that goes 800 mph that uses as fuel only a mixture consisting of water and baking soda. Enable that and I’ll personally see to it that you get a patent the day you apply, just let me know the application number. If you have a similarly important composition that you just enabled you may also let me know and I’ll take a look at it quickly and see what I can do to push it along.

  29. 6: “a product example, someone could claim a car that goes faster than 800 mph’s if they had an enabling disclosure and it would get past 102”

    Are you telling me the PTO would issue a claim to a “A car, wherein said car can go faster than 800 mph”?

    So if I make a car that goes that fast, everyone for the next 20 years who builds a car that goes faster — regardless of how they achieve it — has to take a license from me for the next 20 years?

    I don’t think so.

    I’m surprised at you, 6. Or maybe I’m not. You do work for the the PTO that still issues crap all the time. Evidently there’s still some growing up to do.

  30. “the function being a new use for a known machine or manufacture (i.e., composition), it is a claim to a process, even though it is in the form of an apparatus or composition.”

    I double, nay, triple dog dare you to argue that before the CAFC. there will have never been a quicker decision on the merits against the appellant.

    Before you go to the CAFC you can argue it before me. And I’ll have some lols before examiner’s answer.

    Blend stat catagories at your own risk boys n girls.

    “I’m still not seeing where my original comment was erroneous. If you disclose composition X and state that it is useful for washing monkey tails, it anticipates my claim to composition X, regardless of any functional limitations I add to the claim. We all agree that I can add structural limitations to the claim to avoid anticipation. But I can’t avoid anticipation by adding a clause to the claim that merely describes a new use for the composition, regardless of how fantastic the new use is.

    In Europe, maybe. But not in the United States.

    Well MM, I don’t deal with compositions too often, but for a product example, someone could claim a car that goes faster than 800 mph’s if they had an enabling disclosure and it would get past 102. That doesn’t mean that the “car” is new. I’m supposing there are some analogous examples in the composition arts.

  31. broje “Courts have even held that a functional limitation in an apparatus claim has patentable weight when it specifies how the structural components are operatively connected.”

    That doesn’t sound like a functional limitation to me. Specifying how components are “operably connected” (or more plainly: “connected”) seems like a structural limitation to me.

    I’m still not seeing where my original comment was erroneous. If you disclose composition X and state that it is useful for washing monkey tails, it anticipates my claim to composition X, regardless of any functional limitations I add to the claim. We all agree that I can add structural limitations to the claim to avoid anticipation. But I can’t avoid anticipation by adding a clause to the claim that merely describes a new use for the composition, regardless of how fantastic the new use is.

    In Europe, maybe. But not in the United States.

  32. Apology, MM? Is that sarcasm? I think it is sarcasm. That said, I reread your comment to Dennis and have to agree that it might be viewed as tolerably polite taken out of the context of your typical banter.

    On the whole, I think we are talking about functional limitations being given patentable weight in claims that are not placed in the form of method claims. Functional limitations can be given patentable weight in composition claims. Courts have even held that a functional limitation in an apparatus claim has patentable weight when it specifies how the structural components are operatively connected.

    The upshot is, the function being a new use for a known machine or manufacture (i.e., composition), it is a claim to a process, even though it is in the form of an apparatus or composition.

  33. broje: “Some court decisions have held that, as long as there is any change in the structure of the invention”

    Is this your attempt at an apology?

  34. “Look at 35 USC sec. 101. Also, Congress amended 35 USC sec. 100(b)to expressly state that a process includes a new use of a known process, machine, manufacture, etc.”

    I see. Ok, so then, if we have a process claim then it can be a new use? Is there a section that speaks to new uses for products/compositions/apparatus?

    (Hint: This is why I keep telling you what I do :) )

    “A composition claim in the form “an improved growth stimulating composition for animals which comprises: an animal feed and an effective amount of (old compositions) contained therein for growth simulation” has been allowed. Some court decisions have held that, as long as there is any change in the structure of the invention, patentability can reside in the realization of the non-obvious new use in the new article, with claims being directed to the article.”

    I agree, but that change in structure must be necessarily present. Doesn’t it? Ahh yes, yes it does.

    In the instant case I don’t believe that there was any saving grace available to a composition claim, although I haven’t reviewed the case at length and it may be buried somewhere deep. As Rader mentioned for them at oral arguments they may have had a prayer relating to a process claim.

    I do need to make one thing clear though, just for you guys that have trouble with this concept and since I’m such a nice guy. Just because your new use process claim passes 101 does not mean that it will distinguish over the prior art based on your new use even if the prior art was never put to that specific use. Attorney after attorney tries this mess with me and each of them have been shot down in turn. I probably just saved clients hundreds of thousands of dollars, if your client was affected, please, remind them that it is polite to send me a small stipend. examiner6k@yahoo.com for paypal infos.

  35. Look at 35 USC sec. 101. Also, Congress amended 35 USC sec. 100(b)to expressly state that a process includes a new use of a known process, machine, manufacture, etc.

    That is why I keep tellign you that software is patentable subject matter as a new use of a known machine.

    Regarding compositions, new use inventions can be claimed using composition or apparatus claim formats. A composition claim in the form “an improved growth stimulating composition for animals which comprises: an animal feed and an effective amount of (old compositions) contained therein for growth simulation” has been allowed. Some court decisions have held that, as long as there is any change in the structure of the invention, patentability can reside in the realization of the non-obvious new use in the new article, with claims being directed to the article.

  36. “A new use is patentable. Check the statute. ”

    Can you cite this statute for me? Also, can you tell me if this applies to compositions that were capable of performing the function, but perhaps just hadn’t been used that way before?

    In this particular instant case however, I don’t believe that the composition was capable of any new use that the prior art hadn’t enabled. There might be some new uses that the prior art hadn’t mentioned, but not having mentioned them hardly means that they were not enabled.

  37. broje “Lane was responding to your insultingly scathing and erroneous refutation of Dennis’s note about functional language. ”

    I assume you are referring to my April 3 6:47 post upthread. That comment is not “insultingly scathing” nor is it erroneous.

    Like Lane, you are also confused about the difference between a method claim and a composition claim. This is the United States, not Europe. There are no “use” claims. If the structure of your composition is anticipated, you can not recite a “functional limitation” to avoid anticipation.

    Period.

  38. No, Lane did not blow it.

    A new use is patentable. Check the statute. Lane was responding to your insultingly scathing and erroneous refutation of Dennis’s note about functional language. The upshot is, if the applicant had claimed a new use, then the facts would have been different. And it does not matter that the effect is inherent to the arrangement. If the use is not known, then you can claim the unknown use without In re Gleave blocking your path. What you cannot do is claim the known structure, without any limitation to use, on the basis that you have figured out a use and the previous diclosure of the structure did not enable any use at all. It is just that simple.

  39. “Lane — I think you are overlooking the fact that it was the composition claims that were ruled invalid.”

    Yes, Lane. You blew it.

  40. Lane–

    I think you are overlooking the fact that it was the composition claims that were ruled invalid.

    If the physical structure of a claimed composition is recited or inherent (or readily cognizable) in or from the prior art, the legal conclusion of anticipation follows.

  41. “The function/property of the compositions are inherent to the compositions so anticipation would follow regardless of whether the function/property limitation is recited or not.”

    Um, no.

    I think what Dennis meant was claim language along the lines of “A method of ‘doing X,’ said method comprising the use of SEQ ID NO:Y to ….”

    Just because you know or can infer the sequences (sense, and antisense), you DO NOT KNOW all the uses to which those sequences may be put.

    Anticipation may, but DOES NOT NECESSARILY follow.

  42. “Court says the sense sequence is disclosed and enabling. Sequence is there but no function is given. How can that be enabling?”

    Because they are composition claims, not method claims, and the law is that a reference disclosing a composition is enabled if one of skill in the art can make it. Making an antisense molecule is as easy as pushing a button.

    Please see my cogent and insightful comments at the end of the “Ten Reasons” thread for more disussion of this issue.

  43. Dennis: “A claim by Gleave with functional language might not have been anticipated by the prior disclosure of the bare sequence.”

    While theoretically true (only because the issue wasn’t put before the court here), the court’s reasoning would have precluded such a maneuver by the applicant. A functional limitation *may* help an applicant avoid an obviousness rejection (because the recited property was arguably unexpected or there was teaching away) but — in this particular instance — the court held that the prior art “expressly” taught all of the claimed structures (and then some). The function/property of the compositions are inherent to the compositions so anticipation would follow regardless of whether the function/property limitation is recited or not.

    I continue to remain baffled by the willingness of appellants to take the worst cases “all the way.” It almost makes you wonder whether Gleave and/or Classen have a sort of death wish in which they seek not only to pound as many nails into their coffins as possible, but also to shoot some into the feet of others who aren’t necessarily as greedy as they are.

  44. Genetic sequences = at least one oligonucleotide. Bind complimentary sequences of DNA – inhibit transcription thus no translation.

    Court says the sense sequence is disclosed and enabling. Sequence is there but no function is given. How can that be enabling? If it is see above.

  45. “Based on this decision all genetic sequences are anticipated regardless of their function. Am I missing something?”

    For starters, you’re missing the distinction between a holding and dicta. Also, you’re missing all the language in the case regarding the fact-specific nature of the holding. And I have no idea what you mean by “all genetic sequences.”

    But other than that, you nailed it.

  46. If you know the sense, you know the antisense. However, if you have the complimentary sequence and you do not know the function, then this is case is incorrect. Based on this decision all genetic sequences are anticipated regardless of their function. Am I missing something?

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