"The battle is hardly over," groups that had originally challenged the patent said today in a press statement. They plan to appeal the decision. The 2006 patent relies on the two others that the groups challenged, which were granted in 1998 and 2001 and are currently under review by PTO. Decisions invalidating those patents could severely weaken the 2006 patent, despite its solid position today.
IPBiz notes, first, that decisions invalidating claims of patents OTHER THAN in US 7,029,913 ("the 2006 patent") would have no impact whatsover on the claims of the '913 patent and, second, based on the analysis of the examiner in the paper mailed on February 25, 2008, the claims of the other two WARF patents are not going to be invalidated.
Kintisch failed to mention that the two main references relied upon by PubPat and FTCR were determined not to be enabled by the USPTO. They were in the realm of science fiction, not in the range of teaching someone how to do something.
Kintisch also wrote: Four prominent stem cell scientists--Jeanne Loring of the Scripps Research Institute in San Diego, California; Alan Trounson, now president of the California Institute for Regenerative Medicine, headquartered in San Francisco; and Douglas Melton and Chad Cowan of Harvard University--filed affidavits saying that published techniques that already existed for producing mouse stem cells rendered Thomson's work obvious. But the patent examiner rejected those arguments earlier this week, saying that the published science in the 1990s was too "unpredictable" to lead someone to try making human stem cells "with a reasonable expectation of success." Plus he questioned whether Loring and Trounson were "disinterested" because they have tried to patent stem cell techniques.
One notes that page 46 of the 25 February 2008 mailing of the examiner started a section titled: Declarants Avowal of Obviousness is Conclusionary and Based on Hindsight Analysis At page 47, the examiner notes that the statements of the declarants are "flawed by hindsight reasoning." Further, even as to MOUSE stem cells, the examiner noted that the ability to isolate and maintain VARIED from strain to strain. Somehow, Kintisch neglected to mention this. An argument of the patentee as to the prior patent applications of Loring and Trounson would be the inconsistency in filing a declaration, with those applications, claiming inventorship of something conforming to patent laws (e.g., novelty and non-obviousness) but later filing declarations in the re-exam of the Thomson patents that the work of Thomson was obvious. Loring and Trounson can't have it both ways.
A further irrelevancy of the declarations as to the '913 patent is in the argument about Thomson's unfair advantage in having access to embryos. As pointed out on page 48, Thomson did NOT exemplify human ES cells in the '913. Thus, the declarations were directed to a point irrelevant to the '913 patent. The declarations cannot be used as to the other two patents. Talk about bad planning!
Kintisch has previously manifested a disregard for facts in the realm of patents. See
Kintisch article in Science challenged in Sept. 06 JPTOS
Eli Kintisch still pursuing anti-patent agenda
***Of the WARF win on 25 Feb. 08 see also
See also patent or perish