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Author Topic: Inventive Step Rejection and Genus-Species  (Read 607 times)

examiner_bio

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Inventive Step Rejection and Genus-Species
« on: 05-04-17 at 08:11 pm »

I am dealing with an inventive step rejection where the examiner is saying that since a prior art document genericallly discloses the genus, the claim to the species is not inventive.  Any good advice or arguments/papers (to read) in response to this type of rejection? I figure one is no reasonable expectation of success and also to look at the data to say that nothing specific about the species is disclosed.
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bartmans

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Re: Inventive Step Rejection and Genus-Species
« Reply #1 on: 05-05-17 at 07:40 am »

This seems to sound like a selection invention. For making that inventive, the selection (i.e. species) should have a ifferent technical effect than the genus, such as a better yield, special characteristics, etc. If you are able to highlight those differences, you whould be able to argue inventive step.
If the species just behaves as (other members of) the genus, it will not be possible to argue it is inventive.
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MatteoPes

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Re: Inventive Step Rejection and Genus-Species
« Reply #2 on: 05-05-17 at 09:25 am »

This seems to sound like a selection invention. For making that inventive, the selection (i.e. species) should have a ifferent technical effect than the genus, such as a better yield, special characteristics, etc. If you are able to highlight those differences, you whould be able to argue inventive step.
If the species just behaves as (other members of) the genus, it will not be possible to argue it is inventive.

I agree.
If available, you may submit experimental data to support the thesis that the selection has a different (better for the scope of the invention) effect than the genus. Make sure that the experimental data are repicable, as they may be challenged in opposition proceedings.
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still_learnin

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Re: Inventive Step Rejection and Genus-Species
« Reply #3 on: 05-05-17 at 09:55 am »

Is the rejection under 102 or 103? The arguments available to you differ, depending on the answer.

Also, clarify whether you're talking about US or European practice. "Inventive step" typically refers to European.
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Dazed-n-confused

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Re: Inventive Step Rejection and Genus-Species
« Reply #4 on: 05-05-17 at 12:07 pm »

Is the rejection under 102 or 103? The arguments available to you differ, depending on the answer.

Also, clarify whether you're talking about US or European practice. "Inventive step" typically refers to European.


Hi still_learnin, OP definitely means EP (check at top for forum crumbtrail).
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Dazed-n-confused

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Re: Inventive Step Rejection and Genus-Species
« Reply #5 on: 05-05-17 at 12:13 pm »

Hi Bart and Matteo.  For proving up the different/better aspects of the species, I assume from Matteo's comment that the data itself need not necessarily reside in the application text as filed.

But must the allegation of species being better than the genus be present in the text as filed?  It would seem this would be a necessary predicate to providing the data that proves such an allegation.  What if, if ignorance of the publicly known genus, though, the application text makes no mention of the species vis--vis the genus?

A second question is specific to the provision of the data.  Must it be data older than the application filing date?  Or is it okay to provide newly-developed data because the intent is merely to provide an answer to a current question?

Thanks!
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bartmans

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Re: Inventive Step Rejection and Genus-Species
« Reply #6 on: 05-07-17 at 07:41 am »

Hi dazed-and-confused,

You touch a difficult point there. But first let me explain the basic situation: if you draft your application on a selection invention you should - of course - include in your application why the selection would be deemed inventive over the (genus) prior art. Thus, the different technical effect that would underlie the purposeful selection should be highlighted as one of the advantages of the claimed invention.
As in all cases, data that would show the existence of this effect may be filed later to prove that your presumption was correct (but the presumption should have been made in the application as filed).

What can happen is that you draft your application with respect to the prior art that is known to the drafter and that during prosecution new prior art comes up that shows that the gensu would be already known for the same technical effect. This then is problematic, because the focus of the invention then changes: no longer is the invention tied to the claimed same technical effect, but the invention then lies in the technical effect that is different between the species and the genus. Thus, where the Original technical effect may be the fact that it is possible to produce a product X with this method, the new technical effect may be that with the species claimed you will get less contamination than with the geneus claimed. If this aspect of the invention was not disclosed in the Original application, it will be difficult to argue that this is what makes the invention non-Obvious over the genus prior art. Basically, it could then be said that the specification does not provide sufficient support for the invention. In that case also later filed experimental results will not help in filling this omission.

In the Guidelines for Examination the following is written:
reformulation of the problem is only allowable, if the new problem can be deduced from the application as filed (T 13/84, OJ 1986, 253), i.e. within the limit of the original description (T 162/86, OJ 1988, 452). As a matter of principle, any effect provided by the invention may be used as a basis for reformulating the technical problem, as long as that effect is derivable from the application as filed (T 386/89, see Guidelines G‑VII, 5.2 November 2015 version).  In relation to new effects it was not permissible to change the nature of the invention (T 344/89, T 2233/08).
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MatteoPes

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Re: Inventive Step Rejection and Genus-Species
« Reply #7 on: 05-10-17 at 07:17 am »

Hi Bart and Matteo.  For proving up the different/better aspects of the species, I assume from Matteo's comment that the data itself need not necessarily reside in the application text as filed.

But must the allegation of species being better than the genus be present in the text as filed?  It would seem this would be a necessary predicate to providing the data that proves such an allegation.  What if, if ignorance of the publicly known genus, though, the application text makes no mention of the species vis--vis the genus?

A second question is specific to the provision of the data.  Must it be data older than the application filing date?  Or is it okay to provide newly-developed data because the intent is merely to provide an answer to a current question?

Thanks!


Hi D&C,
Bartmans already answered a big part of your question.
Of course data should already be included in the application. If during the prosecution the circumstances suggest it, for instance new prior art is found which causes redefintion of the technical problem, you may submit NEW experimental data to the examiner, to support your thesis.
The new data cannot be included in the application, of course, but remain in the file, i.e. they are published and available for file inspection.

My advise is: if you choose this way, make sure that the new experimental data are inconfutable. If the patent is granted, you may loose the patent in opposition if an opponent proves that the experimental data used to asses inventive step are somehow not correct....

The examiner has no means to reproduce your experiments, competitors of your client do have such means.
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