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Monday, August 6, 2012

centocor, doyle

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3700 Mechanical Engineering, Manufacturing, and Products & Design
3743 Ex Parte Guryevskiy et al 11138032 - (D) LEE 112(1)/102/103 JAMES RAY & ASSOCIATES BASICHAS, ALFRED

3778 Ex Parte Van Gompel et al 10325481 - (D) WALSH 103 KIMBERLY-CLARK WORLDWIDE, INC. HAND, MELANIE JO

1600 Biotechnology and Organic Chemistry
1649 Ex Parte SOLOMON 09441140 - (D) FREDMAN 112(1)/103 112(1) Browdy and Neimark, PLLC BALLARD, KIMBERLY

In Centocor, the Court addressed Example 13 of the USPTO written description guidelines. The Court found that the “PTO guidelines conclude that characterization of the protein alone may be sufficient under circumstances where 'one of skill in the art would have recognized that the disclosure of the adequately described [protein] X put the applicant in possession of antibodies which bind to [protein] X.'” Centocor Ortho Biotech, Inc. v. Abbott Laboratories, 636 F.3d 1341, 1351 (Fed. Cir 2011).

Centocor distinguished the USPTO written description guideline situation, where the claim simply required binding an antigen, from the more complicated situation where specific properties beyond simply binding of antigen by the antibody are required. Id. at 1352.

1600 Biotechnology and Organic Chemistry
1649 Ex Parte Solomon 11358951 - (D) FREDMAN 251/103/112(1) Browdy and Neimark, PLLC BALLARD, KIMBERLY

We also are not persuaded by Appellant‟s reliance on Doyle. Doyle found that the case involved “a matter of first impression: whether failure to present a so-called linking claim, a claim broad enough to read on—or link—two or more groups of claims subject to a restriction requirement, is an error correctable by reissue” laid out by the Court of Customs and Patent Appeals. In re Doyle, 293 F.3d 1355, 1358 (Fed. Cir. 2002).

In Doyle, the Court found that

it was crucial that the applicant explicitly agreed to the requirement of independent prosecution of the disputed claims (or claims substantially similar to the disputed claims) in a divisional, and not as a part of the application directed towards the elected group. When the applicants returned in reissue seeking to add the disputed claims, the examiner, the Board, and this court rightly held them to the terms of their original agreements. The case is different where, as here, the applicant never asserted the reissue claims or anything similar to them in his original application, and also never agreed to prosecute the reissue claims in a divisional application.

Doyle, 293 F.3d at 1360. The instant facts track much more closely to Orita than to Doyle. In Doyle, there was a linking claim that was broader than all of the original claims and encompassed both groups. Id. at 1358. In this case however, no linking claim was filed.

1700 Chemical & Materials Engineering
1712 Ex Parte Heiligenmann et al 10572146 - (D) GAUDETTE 103 BSH HOME APPLIANCES CORPORATION BLAN, NICOLE R

1786 Ex Parte Yoshitake et al 10557595 - (D) GAUDETTE 103 BIRCH STEWART KOLASCH & BIRCH CROUSE, BRETT ALAN

3700 Mechanical Engineering, Manufacturing, and Products & Design
3734 Ex Parte Huynh 11431727 - (D) ADAMS 112(1)/102 ALCON EVERAGE, KEVIN D

3900 Central Reexamination Unit (CRU)
2615 DPI, INC., MEMOREX PRODUCTS, INC., and IMATION CORP. Requesters and Respondents v. BOSE CORPORATION Patent Owner and Appellant 95001260 7,277,765 09/689,337 COCKS 102/103 37 C.F.R § 41.77(b) 103 FISH & RICHARDSON PC STEELMAN, MARY J original MEI, XU

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