Patent methods making claims

What if the prior art would motivate one of ordinary skill in the art to make the applicant s claimed invention but for a different reason than that relied on by the applicant Should it matter The following example, taken from a CAFC opinion decided this exact question.31 The named petitioner, Dillon, was an assignor of the invention to Union Oil Company, whose application for patent was rejected in the USPTO. After unsuccessfully appealing to the USPTO Board of Appeals, the petitioner appealed to the CAFC and the rejection of the patentability of the claims was affirmed. The subject matter of the relevant claims was directed to compositions containing /c/ra-orthoesters in hydrocarbon fuels and methods of reducing particulate emissions using those fefra-orthoesters in hydrocarbon fuel. To clarify the subject... 

Tellingly,. .. what plaintiffs experts [sic] do not say is that one of skill in the art would, from reading the patent, understand what compound or compounds—which, as the patent makes clear, are necessary to practice the claimed method—would be suitable, nor would one know how to find such a compound except through trial and error. Plaintiffs experts opine that a person of ordinary skill in the art would understand from reading the 850 patent what method is claimed, but it is clear from reading the patent that one critical aspect of the method—a compound that selectively inhibits PGHS-2 activity—was hypothetical, for it is clear that the inventors had neither possession nor knowledge of such a compound. 

The patentability of process claims, whether method of making or method of using, should be determined in the same way as any other claim, that is, by applying 103 to determine whether the invention as a whole is obvious or unobvious. 

As with any patent application, to obtain a patent on a gene, genetic component (e.g., EST or SNP), or diagnostic or therapeutic method, the applicant must demonstrate the utility, novelty, and nonobviousness of the discovery. The applicant must also supply a disclosure and written description of the subject of the proposed patent that is sufficient in detail to show that the inventor had possession of the claimed subject matter at the time of application and to enable one skilled in the field to make use of the claimed subject matter. Although the fundamental elements of patentability have been in place for decades for protection of such innovations as new mechani-... 

Method of manufacturing patent. An applicant is not required to make a certification with respect to any patent that claims only a method of manufacturing the drug product for which the applicant is seeking approval. 

Product claims Compounds, libraries of compounds, phage, assay devices Method of using compounds, more efficient way of making compounds, can still be patented by others the product is new... 

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