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Obviousness
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   "may" be useful - Obvious?
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Joe_Harris
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"may" be useful - Obvious?
« on: Oct 25th, 2004, 10:49pm »
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A patent 789 claims a specific use for compound X for treating disorder A in humans.  In the specification it is stated that the compound "may" be useful for treating five other unrelated disorders B,C,D, E, F without any experimental support or reason provided in the specification for these uses.  Thirty years later, a patent application is filed claiming a method for treating disorder C in humans with compound X.  There are no references in the art other than patent 789 concerning the subject matter of this claim.  Does the statement that a compound "may" be useful establish obviousness for treating disorder C in humans with compound X?
 
Any case law or comments would really be appreciated!
 
Thanks  
Joe
« Last Edit: Oct 25th, 2004, 10:54pm by Joe_Harris » IP Logged
JimIvey
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Re: "may" be useful - Obvious?
« Reply #1 on: Oct 26th, 2004, 10:37am »
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I have a couple thoughts on that, either may or may not be helpful.
 
First, that's a chemical patent question, and chemical patents are a specialty within the specialty of patents.  Chemical patents have slightly specialized rules with respect to enablement and obviousness.  I suspect your question is right along the fine line which separates enabled from not enabled.  As a result, I don't know the answer.  I don't know if there are chemical practitioners here to answer the question.  Hopefully, there are.
 
Second, I see "may" used quite a bit in patent applications and I avoid it like the plague.  To me, "may" connotes uncertainty while "can" connotes ability.  I think too many practitioners use "may" when they really mean "can."  I try to limit "may" to situations in which I'm describing something which may or may not happen -- external stimuli to which some aspect of the technology would respond.
 
Is that too nit-picky?  Perhaps.  To me, it just seems like an easy fix to eliminate unnecessary uncertainty -- so use "can" instead of "may" unless you're describing a stochastic process.
 
Regards.
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James D. Ivey
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Re: "may" be useful - Obvious?
« Reply #2 on: Mar 29th, 2005, 11:04am »
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I know this was posted a few months ago, however, it is common in the chemical arts and may be useful to some now.
 
In re Baird 29 USPQ2d 1550 (Fed. Cir. 1994) would be right on point.  
 
The following key issues are considered relevant when making a proper Baird Analysis when present:
The size of the genus
The express teachings
The teachings of structural similarity  
The teachings of similar properties or uses  
The predictability of the technology  
Any other teaching to support the selection of the species or subgenus
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