Part of the press release is of relevance to the re-exam of WARF patents brought by John Simpson and FTCR:
“We fully expected the PTO’s preliminary decision. In a patent reexamination, the patent office will routinely reject all claims under reexamination in order to shift the responsibility of proof back to the patent holder. We remain confident that we will be able to reaffirm the novelty of these inventions and that broad claims protecting the manufacture and use of neural stem cells will emerge from this process,” said Martin McGlynn, president and chief executive officer of StemCells. “At that time, we will press forward with our case against Neuralstem.”
IPBiz had noted in April 2007:
In patent prosecution the examiner is entitled to reject application claims as anticipated by a prior art patent without conducting an inquiry into whether or not that patent is enabled or whether or not it is the claimed material (as opposed to the unclaimed disclosures) in that patent that are at issue. In re Sasse, 629 F.2d 675, 681, 207 USPQ 107, 111 (C.C.P.A. 1980) (“[W]hen the PTO cited a disclosure which expressly anticipated the present invention . . . the burden was shifted to the applicant. He had to rebut the presumption of the operability of [the prior art patent] by a preponderance of the evidence.” (citation omitted)). The applicant, however, can then overcome that rejection by proving that the relevant disclosures of the prior art patent are not enabled.
More on the bad coverage by Union-Tribune on stem cell matters which commented on an article by Terri Somers entitled: Embryonic stem cell pioneer chose to publish, not patent, concerning the work of Ariff Bongso. Careful reading of Trounson's bio shows that Bongso and Trounson formed a company together to exploit patents in the stem cell area.