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Author Topic: Intended Result vs. Active Result?  (Read 371 times)

memekit

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Intended Result vs. Active Result?
« on: 05-06-18 at 07:35 pm »

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"]
« Last Edit: 05-06-18 at 10:40 pm by memekit »
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Toot Aps Esroh

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Re: Intended Result vs. Active Result?
« Reply #1 on: 05-07-18 at 02:42 pm »

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"]


Are you trying to claim compound X itself?  If so, and if X itself is a known compound, then trying to claim "Compound X, having (whatever) structure, and exhibiting 100% blockage of receptor BR-549" won't work.  If X is known, then it doesn't matter that you've found out a new characteristic of it (the receptor blockage).  You can't claim the compound itself because it is already known.

What may be novel is a claim to the use of the compound to treat a certain disease state by blocking 100% of receptor BR-549 via administration of (whatever) dosage of X.  But if X has been used to treat that disease before and at the same/similar dosages, then you'll likely end up with a rejection like in the question of your other recent post - i.e., if X has been used in similar dosages to treat that disease, it inherently would have been blocking 100% of the receptor activity.
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memekit

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Re: Intended Result vs. Active Result?
« Reply #2 on: 05-08-18 at 02:50 am »

Thank-you.
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