[Patentpractice] Utility of Method of Making

Fri Dec 27 20:25:25 UTC 2024

Many thanks for this David!

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice:  This message is being sent by or on behalf of a lawyer.  It is intended exclusively for the individual or entity to which it is addressed.  This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure.  If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part.  If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.

From: David Boundy <PatentProcedure at gmail.com>
Sent: Friday, December 27, 2024 3:05 PM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>
Cc: Suzannah K. Sundby <suzannah at canadylortz.com>
Subject: Re: [Patentpractice] Utility of Method of Making

PTAB decisions (including non-precedential PTAB decisions) are binding to this extent.  The agency has to follow them or explain the difference, and that explanation has to reflect recognition that the agency is changing its mind.   Two pretty good cases: Fox Television v FCC, https://scholar.google.com/scholar_case?case=6114044271141802936  and Atchison, Topeka & SF Ry. Co. v. Wichita Board of Trade, 412 US 800 (1973), https://scholar.google.com/scholar_case?case=1991381326164722099   There might be other cases in https://ssrn.com/abstract=3258694  (the article will explain everything you could ever want to know about the binding effect of PTAB decisions).

On Fri, Dec 27, 2024 at 1:56 PM Suzannah K. Sundby via Patentpractice <patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>> wrote:
Need case law:

I’d like to avoid the expense and time of having to appeal to the Board.  So, does anyone have:

  1.  Precedential case law on point holding that methods of making a genus of products have sufficient utility where at least one product belonging to the genus has utility; and/or
  2.  Citable law or rule that says Examiner’s must follow Board decisions that are directly on point even if the Board decision is non-precedential (I vaguely recall Boundy or someone else say something about the MPEP is binding on Examiners but not necessary applicants… thus I wonder if there is something similar with Board decisions…)

Facts/Background:

Claims are to a method of making a genus of products.

Some products belonging to the genus have all the utilities, i.e., specific, substantial, and credible, etc.  Some products belonging to the genus do not.

While this is a biotech case an analogy can be made to, e.g., a method of joining links together to make a chain.  Some formed chains have utility, some might not.

My specific claim is a method of joining together pieces of DNA into a larger single DNA molecule.  That is, it is a generic recombinant DNA technique that has advantages (e.g., faster/more efficient and one-pot reaction mixture) over prior art techniques.

There is a specific PTAB appeal decision that is directly on point but non-precedential, Ex parte Lindstrom, 431, Appeal 2018-000914, Application 14/320 (PTAB Feb 21, 2019), which I previously pointed to in the last response.

The Examiner maintained lack of utility rejection insisting that the resulting DNA molecules must be limited to those which have specific, substantial, and credible utility… and points to all the BS crap in the MPEP, Brenner v. Manson, In re Fisher, etc.

I understand Brenner v. Manson held lack of utility because the method was to making a specific thing, which specific think had no known utility.  The claims in In re Fisher were to genetic markers, which the product claims thereto lacked utility because the genetic markers all by themselves as products do not have any use.

But here the claims are to a recombinant DNA method—recombinant DNA methods in and of themselves have substantial, specific, and credible utility.  In fact, the Board in Lindstrom said:

There can be no reasonable dispute that a general method that joins two nucleic acids, whether by restriction enzyme cleavage followed by ligation with DNA ligase, fusion polymerase chain reaction, or the instantly claimed Cas9 process, has specific, substantial, and credible utilities immediately recognizable by the ordinary molecular biologist for use in cloning and other procedures.

But the Examiner is being an *ss and asserts that the resulting DNA molecules must be limited to specific DNA molecules that have utility themselves (meaning the resulting DNA molecules must be limited to specific DNA sequences, which is completely absurd).

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice:  This message is being sent by or on behalf of a lawyer.  It is intended exclusively for the individual or entity to which it is addressed.  This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure.  If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part.  If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.

--
Patentpractice mailing list
Patentpractice at oppedahl-lists.com<mailto:Patentpractice at oppedahl-lists.com>
http://oppedahl-lists.com/mailman/listinfo/patentpractice_oppedahl-lists.com

--

[https://ci3.googleusercontent.com/mail-sig/AIorK4wRMgBgcdZCqTw68Gg6ihENvW6_y8dGBqYvnJwiaIyu6LO5a7IJ-cljKsueIE5uxXbT6s9MN5hE2lGU]      [Cambridge Technology Law LLC]
<https://www.iam-media.com/strategy300/individuals/david-boundy>

Listed as one of the world's 300 leading intellectual property strategists<https://www.iam-media.com/strategy300/individuals/david-boundy>

Articles at http://ssrn.com/author=2936470<http://ssrn.com/author=2936470>
<https://www.keynect.us/requestCardAccess/USA500DBOUN?>

Click here to add me to your contacts.<https://www.keynect.us/requestCardAccess/USA500DBOUN?>

David Boundy<https://www.iam-media.com/strategy300/individuals/david-boundy>

DBoundy at cambridgetechlaw.com<mailto:dboundy at cambridgetechlaw.com> / +1 646.472.9737<tel:%2B1%206464729737>

Cambridge Technology Law LLC
686 Massachusetts Avenue #201, Cambridge  MA  02139
http://www.CambridgeTechLaw.com
http://www.linkedin.com/in/DavidBoundy
mailing address
PO Box 590638
Newton MA   02459

This communication is a confidential attorney-client communication intended only for the person named above or an authorized representative.  Any dissemination, distribution, or copying of this communication is strictly prohibited, whether by the author or recipients.  Any legal, business or tax information contained in this communication, including attachments and enclosures, is not intended as a thorough, in-depth analysis of specific issues, nor a substitute for a formal opinion, nor is it sufficient to avoid legal or other adverse consequences to the recipient. Unless you are the addressee (or authorized to receive for the addressee), you may not copy, use, disclose or distribute this communication or attribute to the Firm any information contained in this communication. If you have received this communication in error, please advise the sender by replying to this message or by telephone, and then promptly delete it.
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20241227/c2c358ef/attachment.html>