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Is it Patentable?
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   Re: Chemical compositions
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   Author  Topic: Re: Chemical compositions  (Read 532 times)
Isaac
Senior Member
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Posts: 3472
Re: Chemical compositions
« on: Jul 24th, 2005, 7:37pm »
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There are no legal requirements limiting what goes in the specification.
The specification must describe the claimed invention, and
enable one to use the invention, but the specification might
enable non claimed inventions as well as describing some non
working "inventions".  The examiner has no incentive to bother
with inoperative, unclaimed stuff in the specification, and
no legal way to insist on its removal.
 
It's enough of a task to try to be sure that the claimed invention
actually works.
IP Logged

Isaac
Wiscagent
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Posts: 843
Re: Chemical compositions
« Reply #1 on: Jul 25th, 2005, 12:10pm »
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I understand your concern, but it is usually less of a problem than it appears.  In order for a claim to be held valid, or for a piece of prior art to be relevant to patentability, the invention must be enabled.  An invention is enabled if the person skilled in the art would be capable of carrying out the invention as disclosed.
 
Hereís a hypothetical example.  Jones develops a catalyst and reaction system that produces copolymers of ethylene with other olefins.  These polymers have certain properties (molecular weight distribution, tacticity, etc.).  The patent application provides actual examples of ethylene + propylene, ethylene + butylene, and ethylene + pentene.  The patent also gives a laundry list of olefins, and vinyl-containing monomers in general that could be used in this reaction.  Perhaps the whole list of copolymers with certain properties is claimed.
 
You go into the lab and successfully duplicate Jones work with ethylene + propylene / butylene / pentene.  You then try to make polymers of ethylene + C6 to C10 olefins by Jonesí method and realize that it cannot be done.  You modify the catalyst system and reaction conditions and develop polymers analogous to Jonesí.
 
You file a patent application.  In your specification you include examples of your invention and other examples showing that Jonesí method does not enable production of polymers of ethylene + C6 to C10 olefins.  This information should allow you to defeat a lack of novelty (sec. 102) and hopefully an obviousness (sec. 103) rejection.  (The lack of enablement in Jonesí patent would also be a defense against an infringement claim by Jones.)
 
Of course thatís not always the way it works in practice.  A hurried examiner will typically see the Jones reference and give your application a rejection.  Then it will be up to you to demonstrate that the rejection is improper.
 
 
Richard Tanzer
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Richard Tanzer
Patent Agent
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