05/20/14

Tobinick v. Olarmarker: Written Description Analysis in Interference Proceeding

Category: Interferences 
 
 
 
By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleTobinick v. Olarmarker, No. 2013-1499 (Fed. Cir. May 19, 2014).
Issue[T]he parties dispute the meaning of “administered locally” and whether Tobinick’s patent application contains written description support for this claim limitation.
Tobinick at *2.
HoldingWe find that Tobinick’s application contains sufficient written description support for local administration because it describes administering the relevant therapeutic compound to the epidural space adjacent to a herniated spinal disc, which is the site where the com- pound “is intended to act” and “the location where the nucleus pulposus is causing the symptoms of the nerve disorder.”
Id. at *2.
 
 
 
[More]
11/13/13

Sanofi-Aventis v. Pfizer: Pre-AIA Conception for DNA Sequences

Category: Interferences
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor
 
TitleSanofi-Aventis v. Pfizer Inc., No. 2012-1345 (Fed. Cir. Nov. 5, 2013).
Issue"[In order to establish conception and reduction to practice before the Sanofi benefit date,] Pfizer argued that its initial sequence was 99.3% accurate, and that the sequencing errors were routinely detected and corrected. […] Sanofi argues that as a matter of law Pfizer did not have a complete conception until Pfizer had the full correct nucleotide sequence […].
Sanofi-Aventis at *6 (text added).
HoldingWe conclude that the Board correctly based conception and reduction to practice on the possession of the isolated DNA segment that was shown to have the desired properties [because although a complete DNA sequence is the gold-standard for identifying a species with precision, it is not the only way to identify proteins and polynucleotides precisely.]"
Id. at *9 (text added).
 
[More]
© 2000-2023, Journal of the Patent & Trademark Office Society
Disclaimer & Privacy Policy