Intellectual Property Law

Federal Circuit hears arguments in In re Kubin; what will be obvious in biotechnology?

By McKee, Voorhees & Sease, P.L.C.

Thursday, the Federal Circuit held oral arguments in In re Kubin, a biotechnology case involving a patent over a gene sequence in humans, and specifically whether the claims were obvious.  This was the first precedential decision by the Board of Patent Appeals and Interferences on the issue of obviousness in this field after KSR, so how the Federal Circuit comes out on the issue has the potential to greatly affect examination of biotechnology applications at the USPTO.  We previously covered the Board's decision in the case in July.

The key issues addressed in oral arguments were whether the prior art, particularly Valiente (a reference teaching a similar protein in mice), rendered the claimed invention obvious, and whether the disclosure of essentially one sequence was sufficient to provide written description for all sequences with 80% similarity that still retain the function of the original gene.  Oral argument focused largely on the obviousness issue.  Many attended the arguments, including representatives from our office.

Click below for more detail of the arguments in In re Kubin.

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Full post as published by FileWrapper on January 11, 2009 (boomark / email).