Melton enters WARF re-exam fray, but does this matter?

The Wisconsin State Journal stated of new papers (declarations) filed in the re-exams of three WARF patents on stem cells:

The challengers are the Foundation for Taxpayer and Consumer Rights, in Santa Monica, Calif., and the New York-based Public Patent Foundation. Now that they have responded to WARF's response, the patent office is expected to issue a final ruling within a few months.

IPBiz notes that in ex parte re-exams, relevant to two of the re-exams here, the initially challenging party does NOT get to respond to the patentee's response to the initial Office Action. Earlier a declaration by Loring was filed by the challangers, and was dutifully and explicitly ignored by the USPTO as procedurally improper. The sort of thing the challengers are doing does make it appear that the challengers are playing more to the press than to the USPTO.

If one looks at the Melton declaration of June 29 (available here), one sees that it is only directed to US 7,029,913 and only to the rejections concerning Robertson/Piedrahita. It has nothing to do with anything else.

Wahlberg of the Journal mentioned material provided by Melton:

Doug Melton, a co-director of the Harvard Stem Cell Institute, said in a declaration released Monday that UW-Madison scientist James Thomson achieved his stem-cell discoveries in 1998 because of his access to money and materials, not because of ground-breaking science.

"He deserves recognition because he undertook the arduous and timely task of getting fresh and high quality human embryos to use as starting material in his work and sufficient funding for such research, not because he did anything that was inventive," Melton wrote.

The relevance of any of this to the current proceeding is unclear. The final sentence of 35 USC 103(a), entirely unaffected by KSR v. Teleflex, states:

Patentability shall not be negatived by the manner in which the invention was made.

Thus, when one has:

But the challengers added a new twist. They said Thomson had "unique access" to an Israeli scientist who provided him with human embryos and enviable funding from the biotech firm Geron.

"Had other scientists in the field been given the same access to those limited resources, they, too, would have been able to make the same accomplishment Dr. Thomson did," the challengers wrote.

The "facts" of this argument remind one of Langley and the Wright Brothers. Langley got over $50,000 of government money and the Wrights spent less than $1,000 of their own money. The Wrights made the invention and Langley did not. Even the attempt of Alexander Graham Bell to re-write history in the first Langley Medal presentation could not change what happened.

See also

http://ipbiz.blogspot.com/2007/04/more-on-bad-coverage-by-union-tribune.html

http://ipbiz.blogspot.com/2006/07/simpsonftcr-file-re-exam-request-on-3.html

http://ipbiz.blogspot.com/2006/07/arguments-concerning-re-exam-of-warfs.html

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Forbes also picked up the AP story, but did not evaluate its accuracy.
From the text:

Competing scientists have jumped into the fray.

Doug Melton, co-director of the Harvard Stem Cell Institute, said in a declaration released Monday that Thomson's achievements came from his access to money and materials, not groundbreaking science.

"He deserves recognition because he undertook the arduous and timely task of getting fresh and high quality human embryos to use as starting material in his work and sufficient funding for such research, not because he did anything that was inventive," Melton wrote.

Declarations from three other scientists also were filed with the patent office Friday and released by the challengers Monday. Those scientists are Chad Cowan of Harvard, Jeanne Loring of the Burnham Institute for Medical Research in San Diego, and Alan Trounson of Monash University in Australia.

Goldie Blumenstyk erroneously wrote in the Chronicle:

In April, the U.S. Patent and Trademark Office ruled that the patents were invalid. The university, through its patenting arm, the Wisconsin Alumni Research Foundation, has appealed that ruling.

IPBiz notes that the USPTO rejected claims in a first Office Action, which is NOT a ruling that the claims are invalid. WARF's response is NOT an appeal of that ruling.

There was also text:

Buoyed with declarations from four internationally known stem-cell scientists, the two consumer groups that have challenged the University of Wisconsin’s patents on embryonic stem cells say that even with the university’s new, narrower claims, the patents should be invalidated.