USPTO BPAI to Reconsider Restriction Practice and Markush Claims

Ex parte DeGrado (BPAI 2011)

The University of Pennsylvania’s pending patent application No. 10/801,951 is directed to the treatment of microbial infections with an amphiliphilic oligomer. The amended claims define the oligomer with seven functional variables that are each independently selected from separate Markush-style groupings and ranges.  (Formula R1-[-x-A1-x-y-A2-y-]m-R2). The result is that millions of different oligomers fit within the claim scope. 

The case is now on appeal before the BPAI on grounds of obviousness-type double patenting based on a prior similar patent also coming from Professor Degrado’s Lab.  Penn has refused to file a term-limiting terminal disclaimer.

In a recent decision, USPTO Commissioner Robert Stoll asserted his role as an Administrative Patent Judge in joining a BPAI decision in the case. The particular decision here does not relate to the obviousness-type double patenting rejection, but rather to “whether Applicants may be required to restrict their claims to a single invention” and whether the claim as drafted is a “proper Markush Claim.” The BPAI has asked for further briefing on those issues.

Limits on Restrictions: The USPTO’s authority for restriction practice stems at least in part from 35 U.S.C. 121. That Section authorizes the USPTO Director to require applications “to be restricted to one” invention. However, in the 1978 Webber case, the CCPA limited that power –  holding that Section 112 gives applicants authority to present claims structured as they see fit. In that case, the court specifically held that patent applicants had the right to include multiple independent and distinct inventions within a single claim.  The BPAI has asked the parties in this dispute to brief this conflict between Webber and the language of Section 121.

Markush Claims: The BPAI has also requested briefing on the question of whether the claims here are proper Markush-type claims.

This case is likely to result in a precedential BPAI opinion and CAFC appeal and may have an important impact on restriction practice and Markush-style claiming.

File Attachment: DeGradoAppealBrf.pdf (1407 KB)

 

 

107 thoughts on “USPTO BPAI to Reconsider Restriction Practice and Markush Claims

  1. 107

    And ‘102, a possibly valuable piece of IP, belongs to the same applicant. I wouldn’t regard it a good idea to knock it. If the compounds of ‘102 weren’t meant to use as medications, what good are they for anyway?

    BTW, there were also Art. 53(c) objections in the EP procedure about exceptions to patentability, as claims were directed to a method for medical treatment. Another major difference between US and EP practice. I wonder how often US physicians – or patients – are actually dragged before a court for patent infringement.

  2. 106

    I may be new – but I am not just off the truck.

    Please do more than simply announce “I am 6” – I judge by what I actually see and you have not impressed at all.

  3. 104

    MaxDrei,

    I do not undertand your attempt at clarifying your earlier comment. I sense that it is not a lack of clarity – that it is a different philosphy that is tripping you up.

    You state “different or better, then you are better placed to beat off obviousness attacks than you are when your invention is only a mere alternative.” but clearly, my post points out that “only a mere alternative” is enough. You seem to use an “or” to try to “sneak” back in the “or better”, but clearly do not accept that “mere alternative” is all that is required for this discussion.

    No one is arguing that something that matches the “or better” would have an easier time gaining the recognition of patentability. But that really is a non sequitur to either the point under discussion here or to my addressing the point of “mere quivalence”, especially as it pertains to elements of a markush group wherein one element at a time can be excised without affecting the claim as a whole. The point stands that “better” has no place in the discsussion of Markush elements and obtaining a patent on the “mere alternatives”.

    Here, “better” just clouds the issue.

    Great discussion by the way – very enjoyable.

  4. 101

    Sorry New, that I did not make myself clear. The technical effect relied upon for patentability in Europe might be nothing more exciting than that you have found an alternative to the known solution. It does not have to perform better. However, if it does perform different or better, then you are better placed to beat off obviousness attacks than you are when your invention is only a mere alternative.

  5. 100

    “As to obviousness, in your app as filed, you associated the Markush group members with some or other technical effect.”

    Not always. Why would they? It isn’t required here in the US. Sure, the USPTO personel can try to cipher one out if they want to if the applicant doesn’t say, but that’s a crpshoot.

    ” How does that change, once the Examiner has shown that at least one member of that group was already in the art.”

    It doesn’t I would imagine.

    “What is the surviving contribution to the art, what is the basis of non-obviousness, when the effect delivered by group members within the surviving narrowed claim is no better than the effect you already promised would be delivered by the Markush member that was originally inside, but now is outside your claim because it was already old at the filing date of the claim.”

    We call that “missing limitations” here in the US. That’s what the “contribution” is. Although, I am the first to admit that there are probably examiners out there who try to establish “equivalence” or whatever and send a rejection. Such rejections are probably always improper, but I’m not going to get into that today.

    “I see here more justification for the European onion skin drafting model: successively narrower statements of invention, each linked to a successively better performance enhancement. 6? ”

    I see no problem save for a problem in reta rdedly restrictive judicial pronouncements about bs readings of 112 affecting 121 and bad acquiescence from the executive branch. That is what I see.

  6. 99

    “From what I understood 6 to say earlier, finding a group member in the prior art only eliminates that member, but no other. ”

    Ned idk what you’re talking about, if the claim is issued and someone finds one of the markush species then the whole claim goes down. If we find it here in the office then they simply amend the claim to get rid of the bad markush species listed.

    As to what max is saying idk, they seem to have some sort of more sophisticated way of handling them, but other than that no max, I doubt being a doctor in your art and talking to people in pharma helps one little bit because expertise is not an issue, the volume of art, the volume of search that needs to be done to find that art, and the volume of issues is the issue.

  7. 98

    MaxDrei,

    I see a flaw in your statement of “effect…is not better… each linked to a successively better performance enhancement.”

    At least in the US, to obtain a patent, one need not have a better solution, one only needs a different solution.

    A quick example. I invent a screen coated with a wildly rare and very costly element MaxDreinium. The utility of the coated screen is not doubted, but the cost is prohibitive. In the business sense I may have failed, but in the patent sense I surely have earned a patent. One year passes and a method is discovered that takes the leftovers from nuclear power plants and provides an abundant and cheap supply of MaxDreinium. Now, after patent grant, the business model can be wildly successful. But such does not and should not have any effect whatsoever on the patent portion, should it?

    In fact, let’s add a wrinkle – let’s postulate that the inventor of the new process of making MaxDreinium, a worker at a nuclear power plant was so inspired by the invention of the coated screen (let’s imagine that one utility of the screen was that it could separate out radiation from water by merely letting the contaminated water flow through the screen) that he purposely set out to creat a process of making cheap MaxDreinium.

    In my hypothetical, the purpose of the patent system is marvelously displayed with an invention that at teh time could easily have been considered not better, but eventually, and through the hands of other unrelated parties became better – such is the power of “different” that our patent system recognizes and promotes.

    Judge Rich has written on this concept much more eloquently than I could, and the notion that “better” is a must is a fallacy, unworthy of being included in the patent system.

    With that in mind, a true invention still exists with the amended Markush group as long as those other group members meet the laws as set out. As you say, that depends onthe application as written, but the application as written would already need to be at that state, would it not?

  8. 97

    Ned, not sure I can do justice, me not being a chem practitioner, but here goes.

    When one member of the Markush set is in prior publication D1, restore novelty over D1 by excising the old matter. So far, so universal.

    As to obviousness, in your app as filed, you associated the Markush group members with some or other technical effect. In other words, you presented each of the group members as a solution to the “technical problem” that corresponds to the statements of utility you made in your app as filed. How does that change, once the Examiner has shown that at least one member of that group was already in the art. What is the surviving contribution to the art, what is the basis of non-obviousness, when the effect delivered by group members within the surviving narrowed claim is no better than the effect you already promised would be delivered by the Markush member that was originally inside, but now is outside your claim because it was already old at the filing date of the claim.

    Depends on the content of the app as filed, whether you can beat off an obviousness attack brought against the surviving narrowed claim that starts out from D1.

    I see here more justification for the European onion skin drafting model: successively narrower statements of invention, each linked to a successively better performance enhancement. 6?

  9. 96

    Max, there is still something about Markush groups that may be different between the States and Europe. Generally, I beleive, a genus claim is no good if one species is in the prior art. However, the same may not be true with Markus groups, at least here in the States. From what I understood 6 to say earlier, finding a group member in the prior art only eliminates that member, but no other. In Europe, it appears however that one treats Markush groups as common genus claims. I am not sure on this point, but if you could confirm this I would appreciate it.

    6, is the above substantially correct from the US point of view?

  10. 95

    6: I can see what issue might be difficult for the USPTO, namely, the one you are telling us about. I cannot see where the difficulty lies for the EPO (and nor can the Examiners there). The EPO cracked the problem decades ago. I still cannot see what issue of patent law presents any difficulty for the applicant or prosecuting attorney. The Examiners at the EPO are deep specialists in their narrow subject matter field, knowing at least as much about their subject as the in-house patent practitioners in the pharma industry, with whom they have been in dialogue over many years. Perhaps those qualifications, and that experience, is what makes their job manageable.

  11. 94

    Lulz, we “routinely handle” them as well Max. That doesn’t mean that they get a good examination. They just get the best examination possible within whatever tiny time is alloted them relative to what is truly required to do justice to such an examination. Notice that is why you may as well call these types of claims registered rather than examined.

    Note further that in re:

    “but I fail to see what issue of patent law is difficult for an experienced patent practitioner to handle, once the relevant science issues have been spelled out for him.”

    I would note that it should be pretty fraking apparent to you what issue of patent law is difficul for an experienced patent practicioner to handle when the relevant science issues, aka the prior art that needs to be considered, approaches infinite. If it isn’t apparent to you then sit and think on it a moment and maybe it will come to you.

  12. 93

    we simply define doing the job correctly differently

    Rather like Patent Hawk defining the law differently for himself…

    The similarities are simply stunning.

  13. 90

    “Guess what, my spe and everyone else here disagrees with you tard.”

    So you, your SPE, and everyone else over there doesn’t know how to do the job correctly?

    Actually, I’m not surprised.

  14. 89

    “Why? If you had done your job correctly, that amendment would have made the claim allowable.”

    Lulz. Doing my job correctly now involves looking over every one of 20 obscure species? Guess what, my spe and everyone else here disagrees with you tard. I don’t think you have a very good grasp of this thing call the time-space continuum in which you exist. To be clear, these species of chemical did not appear at first glance to be the focus of the application at all, there was a whole other device being claimed with these chemicals just being a small part of the overall invention. If he drafts his sht as a markush and in a dep, I’m sure as f not going to look over every species if I have one that invalidates it and his searching time allotment was over a long time ago. Most (all?) other examiners would have word searched a few subclasses for these chemicals and not even bothered trying to find trade names or NPL for each of them, so don’t get all bo hooey on me ya toiletpaper examinin’ tard.

    And btw, I got assigned my first applications for COPA and they’re like really nice and easy to understand. Basically I’m searching for a table. Literally, like you put stuff on. So much easier than the apps I usually put up with. BUT GUESS WHAT? I get more time (standard gs12 time) per bd for these cases than I do for my own hard as bal ls cases. And, I even get a “learning curve” that makes it even higher.

    So I don’t want to hear jack from you tards that deal with this easy a ss sht day in and day out and getting all kinds of time while we’re off doing sht that is actually complicated with LESS TIME.

  15. 88

    Paul, surprisingly, there is not much caselaw in Germany. The explanation given to me is the German “twin track” litigation process, with infringement issues in the District Court and validity issues in the Federal Court. If the accused embodiment is within the Markush, for the District Court, it infringes. If the infringer cannot show the Federal Court that the “effect” relied upon does not extend across the scope, the patent survives. If the USA is effectively split track, like Germany, perhaps England, in doing infringement and validity together in one trial and both on the preponderance with squeeze arguments, is the exceptional jurisdiction?

    For more on Germany, over the years, see the book “Protecting Inventions in Chemistry”, by Bernd Hansen. Mind you, it is out of print. Shame there is no 2nd edition.

  16. 87

    “And then of course he simply amends the claim to take that species out and moves the rest to the ind. I swear to go d I nearly sh at upon myself in anger.”

    Why? If you had done your job correctly, that amendment would have made the claim allowable.

    Here’s a suggestion: stop searching just for art that you can use to make the quickest, most stretched rejection that you can, and conduct the search according to the MPEP’s directives, and you’ll be fine.

  17. 85

    It would be invaluable to know whether there have been any instances in Germany where a Markush claim has been asserted against a compound that falls within the genus but has not been specifically disclosed.

    Such instances could go back to the late 19th or early 20th century when there was rapid progress in dyestuffs, especially in Germany, or there could be instances in the pharmaceutical or plastics fields.

    Owing to the early and significant development of the chemical industry in Germany, it is more likely that there may be relevant instances in Germany than in the UK.

    Any help from Max or his colleagues in Germany?

  18. 84

    Good work, Paul. I’m not a chemist, but I fail to see what issue of patent law is difficult for an experienced patent practitioner to handle, once the relevant science issues have been spelled out for him.

  19. 83

    Very broad claims are likely to be invalid for inutility because there will almost certainly be a substantial number of members of the claimed genus that do not have the postulated utility. A notable example is provided by the UK decision in Pharmacia v Merck which related to Cox 2 inhibitors.

    The objection to a claim of this scope is that it is not plausible that all the members of the postulated genus will share the common property of antimicrobial activlty, that there should be an onus on the applicant to show that it is at least plausible that all or substantially all the claimed compounds will have the postulated activity, that something more than demonstration of a few compounds coupled with mere speculation is needed, and that there should be some balance between the technical contribution in terms of the actual experimental work reported and results disclosed and the width of the genus claimed.

    There are, so far as I have been able to ascertain, very few examples where a Markush claim of the present type has been asserted against a compound that is within the genus but has only been discovered subsequently. The only example I know of where such a claim indeed succeeded was in the UK case of Olin Mathieson v Biorex decided about 1970. In that case the invention was a change of substituent at a single position in a class of closely related substances whose structure-activity relationships were well established, and the defendants had not explored the claimed class experimentally and found any inactive members but had only objected (in interlocutory proceedings) that the class was of undue width. It is also worth mentioning that I have been told by Alan White that the class of semi-synthetic penicillins containing an alpha-amino group all share the common and very valuable characteristic of activity against both Gram-positive and Gram-negative bacteria and that he was not aware of any compound that did not possess this property at least to some extent. Again, however, the change was in a single substituent in a known class of molecules.

    If any readers are aware of other situations where a broad Markush claim has been successfully asserted or is known to have been clearly supportable, it would be helpful if readers could make this known.

  20. 82

    6 wrote: “There is no justification for a markush claim covering more species than there are seconds in a year even if that is indeed what they invented. Such a claim is unexaminable here in the real world.”

    …and I’m grateful to him for my first laugh of the day, because the EPO (which 6 announced earlier to be “nonsensical”) manages them just fine, as a matter of everyday routine.

    Would anybody with plenty of experience of prosecuting Markush claims in both Patent Offices care to comment?

  21. 81

    Oh, and actually I remember that case a bit better now. The reason I sent a restriction was because there was even more species in other deps.

  22. 80

    You obviously do not understand the term tool. Go forth unto the world and learn grasshopper so that I do not have to hold your hand through your awakening.

    As to my basis for disbelief, well, come on man. Isn’t that well settled? My circuit thought so.

    “An administrative agency, charged with the protection of the public interest, is certainly not precluded from taking appropriate action to that end because of mistaken action on its part in the past. Cf. Federal Communications Commission v. Pottsville Broadcasting Co., 309 U.S. 134, 145, 60 S.Ct. 437, 84 L.Ed. 656; Houghton v. Payne, 194 U.S. 88, 100, 24 S.Ct. 590, 48 L.Ed. 888.”

    link to scholar.google.com

    Cited to by:

    “See also Maxwell Co. v. NLRB, 414 F.2d 477, 479 (6th Cir.1969) (holding that the principle of res judicata has no application to administrative agencies’ exercise of powers other than their quasi-judicial powers).”

    link to ftp.resource.org

    Those are just a couple of decisions from the circuit of 6 I slapped down from google. Some of the other commenters might find them as amusing as I did since they seem to blow a big ol’ hole in NAL et al’s positions. You guys can read those decisions, especially the maxwell one for additional cites for additional lulz.

    “Who are you that anyone should give your responses any weight?”

    I’m 6. You must be new around here.

  23. 79

    Well idk about you but I usually finish up whatever sub I was looking at, or the word search, or whatever NPL I have open unless I’m super confident in my art to handle pretty much everything in the app. Because otherwise you’re just going to have to search some more later and you’ll be cold searching it instead of like auto-flipping confidently or on a hot streak looking through NPL.

  24. 78

    Yeppers, I once had a markush of like 10-20 or so weirdly named and exotic species of chemicals in a dependent claim. And I had to go through a lot of examining before I found like the 5th one in some NPL. Like, a lot.

    And then of course he simply amends the claim to take that species out and moves the rest to the ind. I swear to go d I nearly sh at upon myself in anger.

    Where is a species restriction when you need one? O, that’s right, you can’t do a species restriction until AFTER YOU ALREADY NEEDED ONE. So I sent out a species restriction after that iirc, maybe not though idk, this was back when I was really new and didn’t understand species restrictions very well. He elected one of them it seems like even though I think in retrospect this might have been an improper species restriction if I did one. In any case I ended up having to look them all over and just allowed them, probably some of them got less attention than they deserved. And these were not your everyday ho hum species of chemicals they’re like 4-butyl(hexadectal)metamyar se 2′ hexane or some such nonsense for ONE. Who even knows what the trade names were? I tried to get the STIC to do a search and they literally turned me down. I learned later that they weren’t supposed to do that. I don’t remember the whole story but bottom line I was pis sed.

    Oh, and also, the more effort you put into examination the less you are rewarded for it.

  25. 77

    When you are looking for something, isn’t always the last member you are searching for?

    After all, how many people continue searching after they have found what they are looking for?

  26. 75

    … examination should be a piece of cake.

    Uh, except when it’s only the last member of the group that shows up in the prior art.

  27. 74

    If all of this is true, that the examiner has to find but one member of the claimed group in the prior art to reject the whole claim and all species, examination should be a piece of cake. Why then is the commissioner balking?

  28. 73

    MD In chemistry, in Europe, applicants from the USA are often squeezed to destruction, between these two routes.

    Indeed, the squeeze is on already. See my 5:20 pm post, above.

  29. 71

    Agree with Fly, that patentability in Europe hangs on most every ground of patentability except the issue whether the meaning of the claim wording is or is not per se “clear”.

    If the inventor is saying that it was evident to the PHOSITA already on the relevant filing date that all members of the Markush group will deliver the technical effect (solution to the problem) then finding any one of them in the prior art will despatch the claim for want of novelty and for being obvious.

    Conversely, if only some of the Markush solve the objective technical problem, then there is a possibly patentable selection but, if the inventor doesn’t disclose the boundaries of that selected sub-group in the app as filed, then claiming it for the first time during prosecution is adding subject matter after filing, or a want of the needed “written description” of the claimed matter in the app as filed.

    In chemistry, in Europe, applicants from the USA are often squeezed to destruction, between these two routes. Why applicants from the rest of the world are not is because applicants from the rest of the world follow an onion skin drafting model, which US patent attorneys are urged by US litigators to eschew.

    What puzzles me is the advice Lord Kappos was given in London last week, when he solicited the views of the UK patent attorney profession on the Congress Bill. I am reliably informed that he was told that the Bill would bring US best drafting practice in line with that of ROW. Huh?

    Thanks for the hurried answer 6. It leaves me none the wiser. But don’t let that concern you. My question was half rhetorical anyway.

  30. 70

    Interesting. It seems rather bold at this stage of prosecution to admit that amphiphilicity is the key to the antimicrobial activity of these compounds …

    The use of amphiphilic compounds as antimicrobials is old (ancient, really; see, e.g., link to ncbi.nlm.nih.gov, link to ncbi.nlm.nih.gov, etc.) so it can’t be the case that the antimicrobial/amphiphilic correlation admitted here was newly discovered or unexpected.

    Given the admission, it would seem impossible now to argue that it wouldn’t be obvious for one skilled in the art to take a compound similar or identical to any compound in the claimed genus and use it as an antimicrobial because it is (or could easily be made) amphiphilic, and thus be suitable for use as an antimicrobial agent.

  31. 69

    “The examiner opines that claims 1-49 and 51-64 are not patentable because, inter alia, it appears to be highly questionable that it is predictable that all claim variants actually will exhibit the claim properties in relation to treatment of microbial infections and heparin overdose.

    Applicant respectfully disagrees for at least the following reason. As discussed above, the compounds of formula I, II, II a, IV, IV a, IV b, IVc are facially amphiphilic compounds and would necessarily have similar properties. (See the PCT, pages 1-10.) The amphiphilicity of these compounds impart, inter alia, antimicrobial properties. See id. The examiner has not pointed to anything in the art or specification of the present application, which would suggest that the compounds of the claimed invention would not have the same or similar properties. Therefore, the claimed invention is patentable.”

  32. 68

    And everyone else I didn’t get to, meh, you just weren’t important enough for me to talk to you. Sorry. I’m a busy man and you weren’t as amusing as mr. I have a Manifesto Boundy. You can of course schedule an appointment with me anytime you like, standard rates apply. Group sessions available if you get the group together.

  33. 67

    Another disgraceful Troll

    Nice try.

    Unfortunately there’s a big difference between developing and testing new antibiotics versus imagining a new way to make friends on the Internet while sitting on the txxlet.

  34. 66

    Again with a “tool” comment…

    Your use of that term seems to indicate only it is used to label something that you disagree with.

    Without some fixed objective reference (like why such is not proper, not legal, offends some specific rationale other than what “6” likes or thinks is cool, your comments are pretty much vapid and useless.

    Do you even have a basis for your opinion regarding subsequent rulemaking? Do you understand the rules that David Boundy pointed out, or how they relate to the actual constraints of government? You seem quick to call someone with knowledge a “tool,” but seem to not have a grasp of knowledge for even making such a comment.

    Who are you that anyone should give your responses any weight?

  35. 65

    A federal circuit panel agreed with me except on a small point that I hadn’t considered (the serial filing issue which to me is cool anyway), i.e. we won the case, and then a new director came in and gave up. I mean, what more can you say? He started out his tenure a quitter. I’m going to rib him about this when I see him in a few weeks.

  36. 64

    “An agency pronouncement with “future effect” is a “rule.” ”

    A decision is not a “pronouncement”. Ha te to have broken that to you.

    “They got caught, the PTO will too.”

    Oh, did they really? Did they have their own in house quasi judicial body? Oh, what’s that? They didn’t? I lulzed.

    Boundy, give it up toolbag. These crackpot theories of yours, like that huge manifesto is lolable at best, and pitiable at worst.

    “If you don’t think these laws have any teeth, ask John Love and John Doll about why this provision wasn’t added to the MPEP in 2009, and why the IDS and Appeal rules were quashed in 2008.”

    Why which provision didn’t make it in? I would guess that it is because the drafters of the MPEP decided against it.

    And to the second point, um, because of an executive stay on rule-making pending transfer o leadership? Boundy, even I remember history better than you do. I also lulz harder than you do, and thus you would never stand a chance against even me, and the people you’re up against lulz so hard they won’t (can’t?) even talk to you. That is like the ultimate lulz. They just didn’t inform you.

  37. 63

    “You are aware of the Tafas case 6, right? Examination – including prior art search is your job – not the applicants.”

    I’m quite aware of it. And I wonder if you’re aware of the discussion they were having at the CAFC? I do not subscribe to the toolbag view of the office not being able to raise any of the issues in subsequent rulemaking. But moreso, I believe this should be implemented by legislation, not the office.

    Call it the “responsible innovation” act.

  38. 62

    “6, what’s the horrible effect? ”

    Have you ever gone through the mental gymnastics required to make a restriction? That is, have you made one, or at least mock made one? If you have, then you already know what the horrible effect is. Sprinkle on the bacon bits of “burden” and by the time you determine that you should or should not restrict you may as well have just examined the whole application, at least for first action. Thus, restriction becomes all but useless compared to the time you spent, at least at time of FAOM. BUT, then when the amendments start rolling in then your failure to restrict can bite you in the behind and you can’t make a restriction because it is discouraged by policy. Oh, and sprinkle on some more bacon bits of the attorney intentionally trying to draft so that the re tarded restriction scheme is very hard or impossible to apply. And then sprinkle on the bacon bits of if you did it wrong, then op, wasted time (and moreso mental effort).

    I’m pretty good at restrictions, and I’m very good at it once I just got done doing a huge batch. But everytime I come back to doing it from a period of not doing them I have to brush up on it from scratch and relearn that nonsense.

    Rstriction practice, like the law, should be easy enough for the common man to understand it. You know how I feel about overly complicated lawls and interpretations of the lawls. This is just another case of that.

  39. 61

    Ned: The applicant replied that the disclosed compounds facially are (all?) amphiphilic and therefor are necessarily antimicrobial.

    They said that? Can you give the exact quote?

  40. 60

    Fairfly, EPC 83 and 84 seem analogous to Section 112, p. 1, and p. 2. The examiner objected on EPC 83 and 84 grounds, stating the claims cover 400billion compounds with but a few examples. The applicant replied that the disclosed compounds facially are (all?) amphiphilic and therefor are necessarily antimicrobial.

    Is there anything wrong with this reply?

  41. 59

    David, the problem of having more than one invention recited in a claim is a Section 112 problem, probably both p.1 and p.2. Issuing a restriction requirement whereby only one of these is searched obviously does nothing to solve the real problem.

    Restrictions, as you say, make sense only in the context of two different claims, whereby one may be cancelled and examined in a divisional. They make no sense in the context of a single claim.

    Then we also have the problem here of “support” for genus claims in an unpredictable art. The claims at issue seems to claim parts of the compound generically. As Malcolm pointed out below, there probably is insufficient support for such breadth in the specification.

    All of this suggests that the PTO should more properly address such claims using Section 112, rather than Section 121.

    But I do not practice in the chemical arts so I am completely unfamiliar with the issues. There may be good reasons why the PTO has not used Section 112 here. 6 even has laughed at my suggest that this is the problem. I suspect that he knows something that I do not.

    But, I do not agree with the whole idea of “restricting” a Markush claim to one invention when it is claiming several. That makes no sense whatsoever.

  42. 58

    Roufousse lo wouldn’t it be a wonderful occasion to show how the corresponding EP application is dealt with at the EPO? That would be really instructive.

    Look at points 4.2 and 4.3 of the communication dated 21.01.2010. …Then have a look at the applicant’s reply to these points dated 31.07.2010.

    Brilliant rhethorics: I say black, you reply white. This is going nowhere, fast.

    There is also stuff channeled directly from the US counterparts, z.B. a declaration concerning the US application. If filing an affidavit signed by some (purported) big shot was enough to justify granting a patent, then we could do away with patent offices. What really matters are the facts of the case, not the opinion of a third party with possibly vested interests.

    That declaration is pretty funny. Who among us wouldn’t like to get this guy on the stand to discuss this passage from the declaration:

    A person of ordinary skill in the art would not assume from a single in vitro experiment that the polymers described in the ‘102 patent are safe and effective and may be administered to an animal. Furthermore, a person of ordinary skill in the art would be concerned that a metabolite formed from the degradation of the polymer after administration may be toxic. The ‘102 patent provides no information regarding the toxicity of any metabolites. As such, a person of ordinary skill in the art would not conclude from this disclosure in the ‘102 patent the polymers would not be toxic and would be safe to be administered as a pharmaceutical composition to treat a mammal with a microbial infection.

    But of course none of these concerns are relevant to the patentability of applicant’s claimed method of administering one of the billions of untested and potentially toxic oligomers recited in the claims.

  43. 56

    Alors mon très cher petit nonosse Maxillaire, wouldn’t it be a wonderful occasion to show how the corresponding EP application is dealt with at the EPO? That would be really instructive.

    Look at points 4.2 and 4.3 of the communication dated 21.01.2010. [Clicking at once “load all pages” helps in navigating through the document]

    Then have a look at the applicant’s reply to these points dated 31.07.2010.

    Brilliant rhethorics: I say black, you reply white. This is going nowhere, fast.

    There is also stuff channeled directly from the US counterparts, z.B. a declaration concerning the US application. If filing an affidavit signed by some (purported) big shot was enough to justify granting a patent, then we could do away with patent offices. What really matters are the facts of the case, not the opinion of a third party with possibly vested interests.

    The 6th edition of the case law book in the section concerning clarity (II.B.2 Conciseness) states on page 271 (or p. 309/1129 in the PDF):

    A Markush formula is the concisest means of defining a class of chemical compounds in a claim (T1020/98). The examining division had held that “formulating claims in a style that makes routine tasks in substantive examination unnecessarily difficult” was a contravention of Art. 84 EPC 1973. However, there is no legal basis in the Convention for a request to restrict the content of an independent claim so that substantive examination can be carried out with greater ease and less effort.

    The domain’s staked boundary may be extremely convoluted, and its area humongous, but it is nevertheless precisely defined, and therefore “clear”.

    The matter was apparently not pursued further in the latest communication dated 31.03.2011. I somehow have a feeling that the examiner is struggling here, by his concentrating on added subject-matter and leaving other substantive issues aside. Point 3.5 is IMHO correct, but would deserve a better development. In any case, I wouldn’t threat someone with Oral Proceedings as was done under point 4, as the right to be heard is a fundamental one under EP law. Do you threaten someone with his rights? I know, in practice applicants practically only want OPs as a stalling tactic, but at the same time don’t want them, as they have to actually show up and defend their stuff (which they sometimes do extremely poorly), the customer won’t cough up the money for them, and most importantly the ED is then finally allowed to TAKE A DECISION.

    IMO, the problem does not lie with Markush claims in general, but with these specific claims. They apparently stake out a huge field with no garantee that the sought effect is present over the entire gamut of combinations, even though some parcels of the area covered might actually work (i.e., the specific embodiments disclosed and tested). It is like claiming a gold mine located within the boundary of the CONUS, whereas you actually only found a few pebbles in a brook near Podunk, AR. We’re speaking here of missing essential elements (Art. 84 together with Rule 43, i.e. the solution to the problem of finding gold is look for it near Podunk), together with sufficiency of disclosure (Art. 83: you won’t necessarily find gold in ALL of CONUS). Added subject-matter would then arise in the procedure at a later stage (Art. 123(2): There is gold in Colorado, but you couldn’t carve out CO or define the real boundaries of the Podunk discovery, as it wasn’t originally disclosed).

    This reminds me of Saint-Exupéry’s Le petit princeThe prince asks the narrator to draw a sheep. […] After a few failed attempts at drawing a sheep, the narrator draws a box, which he explains has the sheep inside. The prince, who can see the sheep inside the box just as well as he can see the elephant in the boa, says “That’s perfect”. The inventors or their attorneys have no idea of what they came up with exactly, so they just draw a big enough box.

    The Case Law and the Guidelines C-iii-7.4.1 appear to refer to Markush groupings most often in the context of non-unity. I would believe that the considerations of “common property” or “common structural element shared by all of the alternatives” have a strong relationship to the requirements of Articles 83 and 84 I mentioned above. That might be something interesting to try (if it hasn’t already been), instead of the present all-round muddling. I wouldn’t expect the applicant to conduct tests on all the compounds disclosed, but he would still have to provide very good reasons as to why success is to be expected with all of them. Or the subset of effective compounds would need to have been identified in the application at the outset.

    BTW, I’m quite amazed to learn from Herrn Wegner that Markush groups originated in the German chemical industry. I’ll have to look it up.

  44. 55

    Ned Another solution totally under the control of Kappos is to order the search of all 400billion iterations, but have the examiner spend no more than 1/2 hour per week doing so.

    Let the applicant know that this is being done — perhaps even give date the search is expected to be completed, for example, 4 centuries hence.

    Then let us see the weeping an knashing.

    I completely agree. But what would Boundy say?

  45. 54

    The order mentions that the Board “conservatively estimate[s] that Claim 16, in its current form, encompasses in excess of 400 billion oligomers”.

    And how many working examples in the spec? As the applicant will surely tell the USPTO when the prior art is presented, this is an “unpredictable” art. So how many oligimers do you need to test before you have enabled the full scope of a claim like this? I’d say about 100 at a minimum, to give on skilled in the art some idea of the structural/functional constraints at each residue/moiety.

  46. 53

    No special effort. Thanks for noting my incisive commentary. It’s a gift, I guess.

  47. 52

    Also, just from pure logic, if more than on invention is being claimed in a single claim, it would seem that the claim has to be invalid under Section 112, p. 2. If the claim has species that are independent, and the specification has no written description of how they are related functionally as a group, the rejection could be either p. 1 or p. 2.

    I believe the preliminary search did identify 28 different indendent and distinct species — perhaps they have no common relation to the function of the claim as a whole — at least none described in the specification. If that is the case, the rejection should be Section 112, p1 and p.2.

    Seems right.

  48. 51

    Is your commentary always this incisive, or are you making a special effort on my account?

  49. 50

    Another solution totally under the control of Kappos is to order the search of all 400billion iterations, but have the examiner spend no more than 1/2 hour per week doing so.

    Let the applicant know that this is being done — perhaps even give date the search is expected to be completed, for example, 4 centuries hence.

    Then let us see the weeping an knashing.

  50. 49

    “HAHAHAHHAHAAHAHAAHAHHA, the PTO has a lot to gain. Like, o, IDK, the statute it lost back in 78′. The person with a lot to lose, on the other hand, is the applicant here, and all applicants everywhere. And I’m willing to bet that the prosecutor in this case will do just like he did when he didn’t file a petition.

    I can’t wait though Boundy. If this all goes down like you imagine then this is a battle that’s been 40 years in the making, and I literally cannot think of a better toolbag to bring it to a head than YOU.”

    Didn’t you have a similar attitude in the Tafas case? What happened again? Who was right, you or Boundy? I forgot, please jog my memory…

  51. 48

    I do not understand how their actions make them a “tool” of a dou che.

    Which slang meaning are you intending and why? I am just not seeing it.

  52. 47

    Well max, so far as I’m aware, it would be the courts that instituted Markush practice in the first place. Or, in other words, found it to be proper where it previously would not have been. If they based their decisions on the concept of unity of invention then that was a mistake. Unity of invention should be a million miles away from US policy until we decide to adopt ROW style stuff wholesale.

    And just btw, I have little to no interest in discussing this topic with you further. We’re busy men, save the euro chatter.

  53. 46

    It is a play on them being a tool and dou chebaggery. Literally translated, the act of being a tool, usually consciously.

  54. 45

    6, what’s the horrible effect? The burden on the Examiner is not increased when the claim is broad enough to cover more stuff. It’s easier. The Examiner only has to find one thing, remember? The more candidate thingies to find, the faster and easier the google search, amirit?

  55. 44

    6, your comment is well received.

    Any claim that recites “comprising” literally claims an infinite number of devices.

    Even a claim that recites “consiting of” can still literally claim an infinite number of devices. Consider, for example:

    A widget consisting of:
    an elongated member; and
    a handle attached to an end of said elongated member,
    wherein a longitudinal axis of said handle is substantially perpendicular to said elongated member.

    Notice that the length of the elongated member is not recited. There is an infinite amount of variability in that feature alone. Nor is the shape of the handle or the precise angle of attachment specified. Then there are the many colors of the rainbow to be considered.

  56. 43

    Lionel, I agree with you that a claim of this type (somewhat reminiscent of the “method AND apparatus” claim of Ex parte Lyell) has two “inventions” probably could be intra-claim restricted.

  57. 42

    David, I believe you are being a bit extreme in your wording. You may argue that for Markush chemical claims such as this one.

    However, based upon what you are saying is a person could claim an infinite number of inventions without restriction if he puts them in one claim.

    I claim a car having a motor of type 1, type 2…. or Type M, connected to a transission of type 1, type 2,…. or type N and brakes of type 1, type 2,… or type O, etc.

    or better yet

    “I claim a car having…, or a boat having…, or a blender having, or a convection oven having…”

  58. 40

    6 —

    Look at the definition of “rule” in 5 U.S.C. § 551. An agency pronouncement with “future effect” is a “rule.” You don’t think that other agencies didn’t think of this route to end-run the statute long ago. They got caught, the PTO will too.

    Also look at the definition of “collection of information” and “burden” in 44 U.S.C. § 3502. No question that this would be covered.

    If you don’t think these laws have any teeth, ask John Love and John Doll about why this provision wasn’t added to the MPEP in 2009, and why the IDS and Appeal rules were quashed in 2008.

  59. 39

    If the species are within one claim, then they are one “invention.” Sure, there may be ten dependent inventions within, but that doesn’t change the fact that the one independent claim is by definition one “invention.”

  60. 37

    but I don’t really think that it is asking too much for a smidgen of a pre-filing search

    You are aware of the Tafas case 6, right? Examination – including prior art search is your job – not the applicants.

  61. 34

    I would have thought the latter for sure, given what I understand are much more stringent utility and written description requirements for chemical inventions.

  62. 33

    I am no chemist so my opinion may not count for much, but I took one look at that claim and had this simple reaction:

    There is no way in a hades that that claim in any way satisfies Section 112, p. 2.

  63. 32

    A few days before the big hurricane in Pensacola, I FAXED a firing of….. on my Case… And then fired them at the motel also.. Is that the big secret? The girl that claimed it didn’t go through was a LIAR. It absolutely went through. So, if you are claiming that to be the big secret… I have news for you, IT ISN’T A SECRET!

  64. 31

    OK, 6, what is the statutory basis for rejecting a claim where at least on of the species of a group have no functional relation to the others?

    E.g., Boat anchor weights, where a weight is selected from the group consisting of concrete blocks, rocks, lead pipes and helium-filled balloons.

    (Hint, one of the members doesn’t belong.)

  65. 30

    The solution could be so simple: just cash in a full claim fee for every combination generated by the Markush claim.. I’m sure many applicants would think twice, especially when all dependent claims are than calculated using the multiple dependency rules.. Even “big pharma” and “hungry” universities might be found unwilling to pay millions (or in this case billions) of office fees.

  66. 29

    6 wrote: “Well that’s what happens when you import nonsensical european concepts into an american legislative scheme. Whatever court heard this mess back in the day should have had the foresight to see the ramifications.”

    I don’t follow. Who is the importer? The US legislator or the US PTO?

  67. 28

    UPenn might save everyone a lot of trouble by just filing a terminal disclaimer, thereby making the appeal moot.

  68. 27

    Read Boundy’s massive missive – just wait to see what the Office thinks it can get away with.

  69. 26

    Funny thing is, it was always my understanding that BPAI decisions were appealable to the Federal Circuit, and that Federal Circuit case law was binding on the BPAI. I hadn’t realized that the BPAI had the power to overrule the Federal Circuit (as it seems it wants to do here).

  70. 25

    “I don’t fully understand the problem the PTO has here. What am I missing?”

    That’s because you’re mentally deficient Ned. After reminding you that we have to examine the claims rather than “the claimed linking principle” I’ll let you see your own way out of this conversation.

    “I understand that if there is no declared linking principle, the problem lies elsewhere — in Section 112, p. 2, for example.”

    Lol wut? Seriously Ned? Where do you come up with this stuff? This is not patentlyo comedy hour. Though if we have one you could totally be first. Oh, and that was a rhetorical lol wut, please don’t respond trying to justify what you said.

  71. 24

    ” § 121 simply doesn’t apply to species of an invention within an independent claims. The only “conflict” to be resolved exists solely in the Board’s lack of legal sophistication.”

    Or possibly in the legal sophistication itself. Wasn’t that you advocating against the result in In re Jung back awhile back before it came out? Because I’d just like to say: lol.

    “Second, the Board has no independent rule making authority in this area. ”

    Nope, but they do have the ability to render a decision which is appealable.

    “In addition, the PTO must observe the Paperwork Reduction Act, the Regulatory Flexibility Act, several Executive Orders, constitutional limits on retroactive rule making, and OMB’s Circular A-4 and Bulletin on Agency Good Guidance Practices.”

    Lulz, gl with that. This is a board decision, not a rule-making.

    “Third, the PTO’s entire regulatory scheme for restriction (even the current one!) is unenforceable, because the PTO has never even attempted to comply with rule making law. Most of the relevant statutes have “death penalties” for rules promulgated without procedure–take a look at 5 USC § 552(a)(1), 44 USC § 3512, and 5 CFR § 1320.6. One of my notice and comment letters, link to uspto.gov starting at page 35 will give you a brief primer. If the PTO pushes this to a court, the outcome will force PTO to withdraw all restriction requirements ever issued in any application still pending.”

    You’re like a full-blown crackpot aren’t you? You actually have clients that come to you in the real world for legal advice? I guess your everyday prosecution is easier than this higher level stuff you dabble in on the side.

    “Though the PTO did not multiply out the unit-cost numbers it gave, the PTO’s conceded facts add up to over $2 billion per year.”

    But that is for a rule, not a decision. Silly man.

    “If the PTO gets sued, it will be on not only this issue, but the issue of “independent AND distinct” vs “independent OR distinct.””

    Good, bring it on. Your pyrrhic victory, if you achieve it, will only lead to better lawl-making and your ultimate defeat. And frankly that is what I would enjoy most!

    :) :) :) :) :) :) :) :) :) :) :) :) :) :) :)

    Please to be suing!!!!!!!!!!!!!!!111eleventyone11111!!!!!!!!!!

    “When I was younger, the wise advice given in such situations was “Go ahead, punk, move. Make my day.”

    LULZ that’s just what I was thinking!

    “The PTO has nothing to gain, and a LOT to lose with this.”

    HAHAHAHHAHAAHAHAAHAHHA, the PTO has a lot to gain. Like, o, IDK, the statute it lost back in 78′. The person with a lot to lose, on the other hand, is the applicant here, and all applicants everywhere. And I’m willing to bet that the prosecutor in this case will do just like he did when he didn’t file a petition.

    I can’t wait though Boundy. If this all goes down like you imagine then this is a battle that’s been 40 years in the making, and I literally cannot think of a better toolbag to bring it to a head than YOU.

    Well, ok, possibly your bro in toolbaggery Ron. But either of you is totally fine.

    The only thing that would give me any pause is that we currently have what can only be called an um, how would you say this, an um… Director. I’ll just leave it at that. But, if he’s behind this Commissioner guy’s actions then I’m all for it.

    I also note that I had a GREAT 101 case to bring up to the board the other day, but they let it go abandoned, then revived, fired their attorneys after noting to me how bad they were, and then hired new attorneys that fixed the claims up proper-like. I’m rather disappointed overall. I never get the good cases :( The big boys that I play with always want to play by the rules :(

  72. 23

    Hypo from the very first Markush case. The specification disclosed 5 difference species. They are alledged to have a linking principle. There is a single claim, a Markush claim.

    It seems to me that the PTO should simply examine the claimed linking principle. If it is in the prior art, not only is the Markush claim old, every species is also old or obvious, unless particular species are separately claimed.

    I don’t fully understand the problem the PTO has here. What am I missing?

    I understand that if there is no declared linking principle, the problem lies elsewhere — in Section 112, p. 2, for example.

  73. 22

    “two independent claims in a single application, after the PTO shows them to be independent AND distinct from each other.”

    Lulz, the independent in the statute has nothing to do with whether or not the two claims are “independent” claims or not. It has to do with whether or not the claims (or more properly, the “invetention”) are independent from one another. Me and RA had this discussion like 2.5 years ago and he conceded the point. Glad to see you’re still out there fighting the good fight though Boundy.

  74. 21

    According to Boundy and a huge amount of the patent bar: absolutely! Even if the Director would like to restrict! Bottom line, species restriction practice is fed to high he ck. It is no small wonder that every other examiner has no idea how to do it properly because the proper way to restrict species is absurd.

  75. 20

    “”Claim” and “invention” are synonymous and coextensive throughout the patent law.”

    Oh, so that is why courts have held the invention to be what the spec says the invention is and have thus caused drafters to shy away from using the word “invention” in the spec.

    I’ll be. Maybe someone should inform the court that the invention can’t be what the spec says that it is because the invention is just the claim. Then u and me can lol about all this and put it behind us Boundy.

  76. 19

    When I saw that formula, I thought that “millions” was likely an understatement.

  77. 18

    Boundy § 121 simply doesn’t apply to species of an invention within an independent claims.

    How do you mean when you say “species of an invention”? If Applicants claim ten distinct inventions in the alternative in a single independent claim, does the PTO have to examine all of them?

  78. 17

    First, the “conflict” the Board seeks to resolve does not exist. “Claim” and “invention” are synonymous and coextensive throughout the patent law. § 121 gives the Director the authority to divide two “independent AND distinct inventions,” that is, two independent claims in a single application, after the PTO shows them to be independent AND distinct from each other. § 121 simply doesn’t apply to species of an invention within an independent claims. The only “conflict” to be resolved exists solely in the Board’s lack of legal sophistication.

    Second, the Board has no independent rule making authority in this area. Some agencies have the authority to regulate through common law (NLRB for instance), some are required to use rule making with procedures that include cost-benefit analysis. The PTO is one of the latter. If the PTO wants to regulate, 35 USC § 2(b)(2)(B) requires the PTO to follow Administrative Procedure Act rule making procedure. The Tafas cases—after the PTO acquiesced to the district court by requesting dismissal for mootness and the Federal Circuit refused to vacate the district court—held that the PTO must use notice-and-comment. In addition, the PTO must observe the Paperwork Reduction Act, the Regulatory Flexibility Act, several Executive Orders, constitutional limits on retroactive rule making, and OMB’s Circular A-4 and Bulletin on Agency Good Guidance Practices.

    Third, the PTO’s entire regulatory scheme for restriction (even the current one!) is unenforceable, because the PTO has never even attempted to comply with rule making law. Most of the relevant statutes have “death penalties” for rules promulgated without procedure–take a look at 5 USC § 552(a)(1), 44 USC § 3512, and 5 CFR § 1320.6. One of my notice and comment letters, link to uspto.gov starting at page 35 will give you a brief primer. If the PTO pushes this to a court, the outcome will force PTO to withdraw all restriction requirements ever issued in any application still pending.

    Fourth, in the PTO’s 2008 notice, 73 Fed. Reg. 12679 (March 10, 2008), the PTO estimated private sector burden for intra-Markush restrictions. Though the PTO did not multiply out the unit-cost numbers it gave, the PTO’s conceded facts add up to over $2 billion per year. If there are two neurons to synapse together in this panel, the PTO must know that there’s a lot of money riding on this, and it’s just asking to be sued if this goes any further. If the PTO gets sued, it will be on not only this issue, but the issue of “independent AND distinct” vs “independent OR distinct.”

    When I was younger, the wise advice given in such situations was “Go ahead, punk, move. Make my day.” The PTO has nothing to gain, and a LOT to lose with this. An intelligent Board will figure out a way to say “Oops, never mind.”

  79. 16

    6. With a registered patent, the claims are unexamined. Infringement would be narrow — one would prove the infringer did what was descibed in the specification. All of any embodiment.

    The infringer would defend on the basis that what he is accused of doing was old/obvious.

    There would be no presumption of validity of course.

    I think this is the procedure for unexamined patents in Germany.

    So, in the real world, the accused infringer would be accused of doing just one of the many possible combinations. This is all he or she would have to prove is old. That should be that hard if it was indeed old.

  80. 15

    I think you mean dependent claims. I’ve never been against independent claims. I have been substantially against dependent claims though.

    But nah man, I’m not totally against them. That’s what things would be like in a perfect world. Here in the real world a very very very reasonable amount of dependent claims is cool. But like, 20 on the max end of the scale. And that’s being generous. Probably overly so. If there was some good cause demonstrated as to why they’d need more than 20 then fine, let them have em, at the office’s discretion.

    Strong encouragement to make fewer claims of appropriate scope from the get go would also be appropriate, at least until the backlog goes away.

    And just to be clear guys, I don’t mind the occasional simplistic Markush style claim like the ones that got this whole Markush pratice started. It just got out of hand, and I think most reasonable people know that. There is no justification for a markush claim covering more species than there are seconds in a year even if that is indeed what they invented. Such a claim is unexaminable here in the real world. May as well consider any claim along those lines to merely be “registered” under a registration scheme rather than “examined” and blessed by the agency.

    Slightly off topic, but on the topic of restrictions, I note though that recently I have started to recieve claims in the format of:

    A device comprising:

    a well known first structureal component and
    a well known second structural component commonly known to be used with the first structural component.

    Or

    A method comprising:

    performing x well known step and
    performing y well known step (that usually comes after step x).

    Literally, they are that broad. They could literally have just claimed: A thing. And then they go on to break the subject matter up in the dependents into their various species etc. I presume that they are doing this to try to avoid/complicate a restriction rather than having any hope at getting those claims. This is not a practice which I support, and perhaps this case will spill over into that sort of a situation as well.

    Basically the premise is:

    Overclaim wildly, and I mean wildly, in the ind.
    put all claims that would have (before this new claiming paradigm) been ind. claims as dependents from that wildly broad ind.
    hopefully avoid a restriction because the office personel can’t do a proper restriction complete with linking claims and/or species requirements because they don’t know how to utilize the restriction practice in such situations.

    ^that practice needs to go. Maybe it is just bio majors drafting electrical apps that is the problem, but I don’t think so, I looked some of the practicioners up, although they might not have been the one to draft the app.

    Off on a little tangent, I also note that I came up with some potential inventions within my art today and over the weekend. However, I took the time to search them today and guess wut? There was a substantial amount of art that would lead me to believe that there are already active players in that niche and that the broad claims I dreamed of getting would nearly certainly be anticipated, even though two “experts in my field” here at the office confirmed they had never heard of or seen anything like I described.

    Now I know I’m a super googler and all, but I don’t really think that it is asking too much for a smidgen of a pre-filing search so that we could probably skip a full round of prosecution (at minimum) here at the office in a huge % of the cases being filed. Talk about ending the backlog, that is one way to do it. You don’t even have to make it be a big deal, most applicants, left to their own devices (that is, without a lawlyer telling them not to search) would probably happily do a 15 minute google search as to their invention before filing.

  81. 14

    Let me see. You pick one species from each group to examine. If they are all found novel and unobvious, the claim is allowed. If any are found old, claim is rejected.

    How would the applicant respond? Can he amend the claim or does he have to file a divisional?

  82. 12

    6, I take it you’re still opposed to independent claims, and think an application should only contain 1 claim, and that claim should be a picture claim, right?

  83. 11

    So, did not all the examiner had to do was to go find and apply just one of those 400 billion oligomers [which should make that prior art search a lot easier], to reject the claim, instead of a restriction requirement delaying substantive examination, causing client-costly unnecessary divisonals and increasing PTO backlogs?
    And/or, apply a 112 rejection for insufficient spec support for such broad claim?

  84. 10

    “We require that Applicants brief the apparent conflict between the
    plain language of § 121 and the Weber and Haas opinions. As part of the
    briefing applicants are required to address whether the language of the
    second paragraph of § 112, requiring “one or more claims . . . claiming the
    subject matter the applicant regards as his invention” necessarily precludes
    the Director from exercising his statutory discretion “to require the
    application to be restricted to one of the inventions” when more than one
    independent and distinct inventions are encompassed within a single claim.”

    Nice. We’re living in glorious times for the lawl I tell you. Glorious.

    “We also require additional briefing on whether Claims 16-48 are
    proper Markush Claims. In re Harnisch, 631 F.2d 716 (C.C.P.A. 1980)
    notes that the body of law relating to Markush-type claims is concerned with
    the concept of “unity of invention.” Harnisch, 631 F.2d at 721. The court
    used unity of invention to refer to the situation where unrelated, i.e.,
    independent and distinct, inventions are captured in a single claim.
    Harnisch, 631 F.2d at 722. A Markush claim is improper if the inventions
    (1) do not share a common use; or (2) do not share a “single structural
    similarity,” that is, a substantial structural feature disclosed as being
    essential to the common utility. Harnisch, 631 F.2d at 722; Ex parte
    Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). The Examiner
    held that Claims 16-48 encompassed 21 unrelated inventions. Paper entered
    December 28, 2006, pp. 2-6. That determination was based upon the
    markedly different chemical structures between the oligomers in the
    different groups.”

    Well that’s what happens when you import nonsensical european concepts into an american legislative scheme. Whatever court heard this mess back in the day should have had the foresight to see the ramifications.

    “Applicants are required to brief whether the recitation of a broad
    general formula covering a very large group of compounds, the recitation of
    a general chemical property (amphiphilicity) that may be possessed by those
    compounds, and the recitation of the single broad step of “administering an
    effective amount” is per se sufficient to create “unity of invention” as that
    concept was used by the Harnisch court. Applicants are also required to
    brief whether, considering only the oligomers as defined by Formula II in
    Claim 16, the 21 groups identified by the Examiner are unrelated inventions.
    Stated another way, do those groups share any additional structural or
    functional features that would establish unity of invention?”

    lulz

    Overall, I truly hope that the applicant in this case follows the party line and addresses the points how your standard attorney would. I hope they make no concessions so that we’ll have straight-forward guidance on how wrongly decided the prior opinions involved here were.

  85. 9

    “The Official record of this application does not show that a petition
    was filed to the Examiner’s final restriction requirement.”

    And I lulzed.

    MANY TIMES.

  86. 8

    “However, in the 1978 Webber case, the CCPA limited that power – holding that Section 112 gives applicants authority to present claims structured as they see fit. ”

    No, because they were re tarded, not because 112 gives applicant’s authority to present claims structured as they see fit. Just like they were when dealing with functional claiming etc. I swear to go d, they did more to undermine the legitimacy of patent law in 60’s and 70’s than at any other period. I don’t know if the judges at that time were flower children or whatever but that vibe seems to have permiated into every facet of life including the judiciary. The things they did in traffic law, criminal law etc. on down the line mirror this ridiculousness as well. It is as if they didn’t care one little bit about the effect which their decisions was going to have.

    “This case is likely to result in a precedential BPAI opinion and CAFC appeal and may have an important impact on restriction practice and Markush-style claiming. ”

    Good, I can’t wait. Will the court have matured over the decades, or will the court stick with its magiced up reading of 112? Always hard to tell.

  87. 6

    Technically speaking a lot of the standard inventions I take care of encompass 400 billion, or even infinite, devices etc.

  88. 5

    The summary understated that number by five orders of magnitude, so I thought it deserved a mention.

  89. 3

    The order mentions that the Board “conservatively estimate[s] that Claim 16, in its current form, encompasses in excess of 400 billion oligomers”.

  90. 1

    Hal Wegner already critiqued the PTO’s position in his comments to the PTO’s proposed rule changes for Markush claims. The comments are a few years old, but worth reading as he does a pretty good job of shredding the PTO’s attempts to restrict claims to a “single invention.”

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