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Claims Anticipated by Applicants’ Earlier Publication

December 21, 2004

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Last Month at the Federal Circuit - January 2005

Judges: Lourie (author), Mayer, and Dyk

In In re Crish, No. 04-1075 (Fed. Cir. Dec. 21, 2004), the Federal Circuit affirmed a rejection of three claims of a patent application as being unpatentable based on anticipation by two prior publications.

The invention relates to purified DNA molecules having promoter activity for the human involucrin gene (hINV). Involucrin is a protein that interacts with keratin and other intracellular proteins to strengthen the plasma membranes of cells in the outer layers of the skin. The involucrin gene contains the DNA sequence that codes for involucrin. During prosecution, the Examiner rejected the three claims in question as being anticipated by the applicants’ (“Crish”) own publication and a Welter publication, of which Crish was also a coauthor.

On appeal, the applicants argued that the Board had improperly expanded the scope of the claims to allow nucleotides in addition to the specified portions of SEQ ID NO:1. The applicants argued that during prosecution, the term “consist” was added to limit the claimed oligonucleotide to a specific DNA sequence in the promoter region, as opposed to the entire SEQ ID NO:1. The Federal Circuit found that the Board’s construction was reasonable because the claims also contain the open-ended transition term “comprising.” According to the Court, read in context, the claims do not preclude a DNA sequence having additional nucleotides.

Concerning anticipation, the applicants argued that a person of ordinary skill in the art starting with the plasmid disclosed in the Crish and Welter publications would not necessarily have obtained SEQ ID NO:1. The Federal Circuit rejected the applicants’ argument that the claims are not anticipated because the Crish publication did not sequence the promoter region of hINV. According to the Court, a long line of cases confirms that one cannot establish novelty by claiming a known material by its properties. The Federal Circuit acknowledged that the Board had concluded that the plasmid used in the application and the Crish publication were the same, but concluded that this conclusion was reasonable, because Crish is both an inventor of the application and an author of the prior art publication, both the application and the publication refer to the promoter region as being about the same size, and both the application and the publication refer to the same source for the plasmid. The applicants had provided no evidence that the plasmids used in the application and the Crish publication were different. Accordingly, the Federal Circuit affirmed the finding of anticipation.