Harnisch , Unity of Invention, and 76 Fed. Reg. 7166 AIPLA Biotechnology Committee Presentation March 17, 2011. Brian Lathrop, Ph.D., Esq. [email protected] Disclaimer.
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Many in the patent bar considered the result on slides 6-7 as contrary to the holding in In re Weber, 580 F.2d 455 (CCPA 1978):
As a general proposition, an applicant has a right [under 35 U.S.C. § 112. 2nd para.] to have each claim examined on the merits. . . . If, however, a single claim is required to be divided up and presented in several applications, that claim would never be considered on its merits. The totality of the resulting fragmentary claims would not necessarily be the equivalent of the original claim.
The district court reviews agency actions (e.g., a restriction requirement) under the Administrative Procedure Act:
The district court consults the MPEP (e.g., chapter 800) and case law (e.g., Weber) to determine whether the USPTO action was arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law. 5 U.S.C. § 706(a)(2).
But review requires a “final agency action,” and it is expensive and time consuming.
CCPA: The members do not need to be functionally equivalent, but they must have a common disclosed function: e.g., dyestuffs.
“Notwithstanding their various properties, the court found all of the [chemical compounds, which were growth-regulating compositions for plants, fungicides, and insecticides] included in the claims were plant growth stimulants, thus having a common function.” Citing In re Jones, 162 F.2d 479 (CCPA 1947).
“The mere fact that there is a single structural similarity (i.e., the coumarin group) is not in itself sufficient reason to render all the embodiments functionally equivalent, particularly when the ultimate properties of the final products would not be expected to possess any recognized functional relationship.”
CCPA: A single structural similarity is sufficient:
“The board's reliance on its notion that some of the claimed compounds are ‘no more than intermediates’ overlooked the now admitted fact that they are dyes as well. Clearly, they are all coumarin compounds which the board admitted to be ‘a single structural similarity.’ We hold, therefore, that the claimed compounds all belong to a subgenus [i.e., “dyes”], as defined by appellant, which is not repugnant to scientific classification.”
Solicitor: unity of invention is about claiming multiple inventions in one claim:
“One aspect of the improper Markush group rejection not touched upon by the board or appellant needs to be presented to give the Court a full picture. . . . [It] has been a concern of the Commissioner that an applicant narrowing his claim in response to such a rejection not be met later with a double patenting rejection should he file a divisional application.”
“It is with this unity of invention concept in mind that we approach the propriety of the appealed claims. . . . Reference to the widely-recognized concept of ‘unity of invention’ has been made in order to suggest an appropriate term to apply where unrelated inventions are involved—inventions which are truly independent and distinct. This case, we find, does not involve such inventions.” Emphasis in original.See also n.6.
USPTO cannot apply the “independent OR distinct” standard to Markush claims.