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#1

Say a drug works best at 5 uM at some receptor or enzyme or whatever.  A patent will often say a wt%, say .001 wt% to 10 wt%.  The reason this is meaningless is that with manipulation, another wt% outside that range can still be manipulated to achieve 5 uM serum concentration.  If the wt% is less, take more pills, if the wt% is more take fewer, take them less often, use a patch or injection, there are workarounds to get to 5 uM.  That is to say that wt% confers no real information.

But if a patent says the drug is dosed to achieve a serum concentration of 5 uM, doesn't that obviate all possible infringement by various wt%-s which are only the route to achieve 5 uM?  This is what I think. 
So if a patent says that the drug works best when dosed to achieve a serum level of around 5 uM, then would not any wt% which achieves 5uM infringe?
#2
If the effective serum concentration is 0.5 uM... one could achieve an effective serum concentration by manipulating ANY wt% to achieve it...so this is why I would think the serum concentration is the gold standard claim, not the wt%.  So, why is wt% used in claims?
#3
Yes, this is the program I use for all my USPTO .pdf uploads.  Search for reviews there may be even better.
#4
I've only encountered that when I wanted a patent agent to listen in on an interview.  The Examiner did not want anyone to listen in so he said the agent would need to file such paperwork, but there was insufficient time prior to the interview date, so the agent was disallowed.
#5
I crisped up my graphics by using a "draw bitmap" function on inkscape.  Also try just image enhancement on power point.  Then print to PDF Pro (don't just 'save as pdf' actually print as pdf) and adjust the dpi and you can see and pre-tweak the outcome.
#6
Limitation 1:  The chemical can be introduced to the system at various weight percents to achieve desired effect.
vs.
Limitation 2:  The desired effect is achieved at around 0.5 uM in the system.

In terms of IP protection, isn't limitation 2 most valid?  If someone uses the chemical at 1 wt% or 99 wt%, it's still only effective at 0.5 uM.
So if the patent is for the actual effective concentration, and someone uses the compound at various wt%-s, as long as it covers then the actual patented concentration would it infringe?  If the person using the compound sells it and its use could result in 0.5 uM, isn't that infringement? 
#7
Patentable matter must be novel, useful, and do-able.  Novelty discernment involves a prior art search of the published literature, patent literature and marketed items.
If your end goal is to license technology for profit, if you know the marketplace very well and know there is no prior art, you could start with a $65 provisional patent and try to get a manufacturer (I'd also use a nondisclosure agreement) to both pay for your patent costs as well as eventually give you royalties.  You'd start with the drawing up of a terms sheet then negotiate a contract.  Most modern companies allow outside innovation/technologies but old school ones will still say in-house-only (developments) or that you must have a patent to approach (just pass them by).  A patent can take 4 years + so that's a lot of missed marketing opportunities timewise, and certainly if you can get the company to pay for legal expenses you can spare yourself zillions of hours and $$$ to go through the patent process. 
I'm just a pro se applicant myself. 
#8
Thanks.  The definition of the term in MW is specific to chemicals, and is commonly used.  Must any and all spec terms thus be defined therein, or is there any common reference ground?

I think it comes down to the context of the spec to box out any wayward definitions for a term.  For example a scientific term could have an emotional, societal, personal, or other meaning, but used in a scientific specification the context would point to the scientific meaning. 

I found this in this article: 

https://www.google.com/url?sa=t&rct=j&q=&esrc=s&source=web&cd=2&cad=rja&uact=8&ved=0ahUKEwiInvLXxePbAhUEQKwKHQ6IDLAQFggrMAE&url=http%3A%2F%2Fstudentorgs.kentlaw.iit.edu%2Fckjip%2Fwp-content%2Fuploads%2Fsites%2F4%2F2013%2F06%2F04_6JIntellProp432006-2007.pdf&usg=AOvVaw3yQBMlBXpFzROSQc7X0c9l

Conclusion
Dictionaries have been a source of great confusion regarding construing patent claims.
Initially dictionaries were considered extrinsic evidence and only to be considered if the intrinsic
evidence, or evidence of patent record, was ambiguous as to claim term meaning. However, the
combination of Markman, Vitronics, and Texas Digital changed the construing landscape. In
some cases, dictionaries were used after looking at the intrinsic evidence, but in others,
dictionaries were used to determine the ordinary meaning of claim terms and the intrinsic
evidence was used to make sure the correct meaning was chosen. Also, there were and are
problems with different meanings between different dictionaries, different meanings within one
dictionary, and choosing between general and specific/technical dictionaries. Very little
guidance has been given by the courts and many of the courts, including the CAFC, applied
different standards in different cases. The result has been increased litigation, lack of certainty,
and a collapse of the important patent goal of claim definiteness.
The CAFC opened the door to suggestions to correct these and other claim interpretation
problems through the Phillips en banc rehearing. Many of the organizations filing amicus briefs
have argued to put dictionaries back as extrinsic evidence. Unfortunately, the Phillips III court
agreed with those amicus briefs. However, dictionaries serve a very valuable and useful
purpose. They can provide guidance to claim terminology, especially when the patentee has
been careless about being his own lexicographer, and are readily available to the public. There
must be rules, however, to guide the public and judges.
The USPTO should require that all future patent applications contain a word appendix,
listing any confusing claim terms and their meanings, and a listing of the appropriate dictionaries
to use for terms that might not appear in the word appendix. With this new rule, dictionaries
become intrinsic evidence. For existing patents, the USPTO should set a standard general
dictionary and technical dictionary for each relevant technical area, with a publication date just
previous to each patents filing date. Based upon these rules, the public would be put on notice
for word meaning and dictionary use. The federal courts, besides following the dictionaries and
word meanings set by the patent application or by the USPTO, should always make sure that any
claim term defined from a dictionary matches the term as used in the specification. In other
words, the definition should make sense in the context of the patent. This would reduce the
problems with multiple definitions within a dictionary. By following these rules, dictionaries
will have a proper role in claim construction, litigation will be reduced, licensing or designing
around will be easier, and claim definiteness will once again be an achievable goal.
#9
Are Dictionary definitions of a term "Intrinsic Evidence"?  Is Meriam Webster the gold standard?  Can a dictionary definition for a term be used in the claims?  What to do when Examiner's opinion of a definition of a key term differs from the dictionary's?

Also do chemical drawings of a molecule in the specs convey intrinsic implication of properties of that pure molecule described otherwise within the specification?  Can the drawing of a molecule ("Figure 4") be used in the claims to convey the implication of properties of the pure molecule?

Thank-you


#10
I'm a pro se applicant but...from what I've heard...
If it was invented in the 1970s, that's prior art, and you cannot claim it as novel/useful/enabled...the novel part will fail.
Even if it's a version of the 1970s form you'd have to overcome inherency.
#12
Data in spec shows a key receptor effect caused by compound X, it's never been seen before, 100% blockage at ~ 10 nM.  But Examiner says "x blocking receptor is just intended result not active result".
Wat?   
Anyway, how is this "intended results" stuff overcome?  Thank-you.


edit:  Here is something I found googling around:
http://www.oblon.com/news/intended-use-and-anticipation-a-lesson/

"a statement of intended use cannot distinguish over a prior art apparatus that discloses all the recited limitations and is capable of performing the recited function," citing In re Schreiber, 128

"A lesson to be learned from the BPAI decision is that claims should be carefully drafted to avoid a finding of intended use, especially when functional features are involved. For instance, use of the term "for" in a non-means plus function apparatus claim should be carefully considered, as this term may result in certain features of the claim not being provided full patentable weight."

intended use "bad" claim example
"Claim 1 of the 11/408,722 application (herein '722 application) is directed to a bulk erase tool which comprised "a second polarity main erase bottom magnet having a first polarity bottom cancel magnet at a portion thereof, said first polarity top and bottom cancel magnets and said second polarity top and bottom cancel magnets for reducing the bulk erase tool field strength at said first portion of said bulk erase tool."  "

[ do not use "for"]
#13
Thank-you very much. 
The "prior art" Examiner has is this:
Applicant claims method to treat disease 77 by administering compound E, and spec describes isolated or 98% pure chemical and IC50 & % receptor inhibition data for enzyme inhibition to treat disease 77.
The  Examiner's prior art says Compound E from a crude purified extract, was used to mitigate the side effects of a drug S, drug S was used to treat disease 77, but drug E was not used to treat disease 77 itself.

Applicant claims method to treat disease 77 by administering compound E, and spec describes isolated or 98% pure chemical and IC50 & % receptor inhibition data and a mg dose, for enzyme inhibition to treat disease 77.
The Examiner's prior art says Compound F-1, similar core to compound F, has computer modeling predicting it could inhibit enzyme responsible for disease 77.

So does the combination of the IC50, % receptor inhibition, and purity plus functional, overcome prior art?

#14
"When structural limitation is met the functional language even is not taught or suggested, is also expected."
#15
I'm pro se but hired help from a patent agent to review claims and help with an interview.  My Examiner wrote that a patent agent I hired for consultation (this is recent and this person has no POA)
examiner cannot speak to them on an interview.
Can the PA be in the conference and speak to me later about what went on?  Should I just notify then record the conference call to send to agent for explanation later?
Is there a way to get my patent agent OK'd to speak to examiner quickly?  I just want straight answers, and hoped this would improve things.  Thank-you.


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