Patent methods using claims

This ref pertains to a US patent for a nondestructive testing method and app for determining the presence of voids, cracks or discontinuities in solid substances by the use of radioactive gases as a tracer. Although developed specifically for use with large solid proplnt rocket motors, composed mainly of active ingredients such as ammonium perchlorate imbedded in an inert binder, the method is claimed to be applicable to other solids as well... 

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... 

A) If information that is submitted under section 505(b) or (c) of the act and Sec. 314.53 is for a method of use patent, and the labeling for the drug product for which the applicant is seeking approval does not include any indications that are covered by the use patent, a statement explaining that the method of use patent does not claim any of the proposed indications. 

B) if with respect to the drug for which investigations described in paragraph (1)(A) were conducted, information was filed under paragraph (1) or subsection (c) for a method of use patent which does not claim a use for which the applicant is seeking approval under this subsection, a statement that the method of use patent does not claim such a use. 

For the preparation of poly(isoprene), the monomer 2-methyl-1,3-buta-diene (= isoprene = IP) is required as feedstock. This monomer can be obtained by various condensation methods that utilize four principles to create the C5 skeleton. In the more modern process IP is obtained from the C5 cracking fraction which contains various double-bond containing hydrocarbons with 5 C-atoms (e.g. among other C5-compounds the fraction contains cyclopentadiene, various pentadienes and pentenes) [478]. The preparation of pure IP by either of these two routes is cost intensive. By the direct and selective polymerization of IP in the crude C5 cracking fraction the cost intensive isolation of pure IP is avoided. Thereby production costs for IR are considerably reduced [264,265]. The selective polymerization of IP in the crude C5 cracking fraction is achieved by the application of a NdP-based catalyst system. The latest patent of Michehn claims a process in which dehydrogenation of the C5 cut is applied prior to polymerization. In this way an IP-enriched C5-fraction is obtained which does not contain a high quantity of disubstituted alkynes, terminal alkynes and cyclopentadiene. The unpurified C5-fraction is used as the feedstock for polymerization [591,592]. 

Swedish Patent Office authorized a patent, provided the claim was changed to read a method of producing growth-controlling agents. Merely labeling an old process with a new use, as was done in this case, would not qualify for a patent in the United States. 

Obtain a copy of a patent dealing with a chemical process and outline the claims presented in this patent. Indicate the method used for presenting the specifications, and explain how the inventor presented proof of his or her claims. 

The second type of method-of-use claims relates to methods of using the invention. In terms of pharmaceuticals, method-of-use claims typically relate to the use of a particular drug in the treatment of specific diseases or conditions. FDA approval of a new drug is linked to specific therapeutic uses, and therefore these types of method claims provide important protection for the innovator. These claims are important because they provide patent protection that is in addition to any composition-of-matter claims that may be applicable. Method-of-treatment claims are particularly important for compounds that are already subject to composition-of-matter claims or for which composition-of-matter claims are not available. For example, an inventor may discover that a previously known compound possesses unreported and unexpected antiinflammatory properties. The inventor may not obtain composition-of-matter protection for the compound itself because the compound is contained in the literature and therefore does not meet the novelty requirement for patentability. However, the inventor may instead obtain a method-of-use claim based on the unexpected anti-inflammatory properties because a compound s unexpected properties may be enough to support patentability. 

In American practice, in an application for invention concerning compounds, only prodncts and methods of use claims are generally admitted by the examiners of the Patent Office. For a process for the manufacture of products, a divisional application is often reqnired. In all cases, the claims cannot extend more widely than the description, completed if appropriate with the drawings. 

Currently in the United States, all four kinds of claims are often found in a single patent. Prior to 1980, the U.S. Patent and Trademark Office (PTO)3usually granted three patents for the four types of claims one for the compound claim, one for the composition and method-of-use claim and one for the method of manufacture claim. The transition to a single patent has occurred gradually over the past 10 years and reflects procedural changes within the PTO (284). 

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