Thursday, December 23, 2004

Anticipation affirmed In re Crish

The In re Crish case decided by the CAFC has an interesting "been there done that" footnote. Footnote 1 basically says because of the many cases on the subject of molecular biology, familiarity with the language of molecular biology is presumed.

Patent applicant Crish lost on anticipation (35 USC 102(b)) based on articles that he authored/co-authored. In the context of a review of the PTO/Board, the CAFC noted a two step process in anticipation. First, determining whether the Board's construction was reasonable (the broadest reasonable construction under In re Morris, 127 F.3d 1048). Second, the factual finding of matching claimed elements to the prior art is reviewed for substantial evidence under In re Gartside, 203 F.3d 1305. Substantial evidence is relevant evidence that a reasonable mind might accept as adequate to support a conclusion. The CAFC also mentioned the "two inconsistent conclusions" language of Consolo, 383 US 607, 620 (1966).

In affirming, the CAFC did diverge from the Board in reasoning. The CAFC noted that the sequence is the IDENTITY of the gene, not one of its properties. The CAFC noted one cannot establish novelty by claiming the properties of a known material, citing among other cases Titanium Metals, 778 F2d 775. There was a debate about whether a certain feature was present in the prior art. Basically, the CAFC indicated if the inference of the PTO was reasonable, the evidence will compel the conclusion UNLESS applicant produces evidence to rebut the inference, citing Spada, 911 F.2d at 708, n.3.


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