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The Scientist: NewsBlog:
Stem cell patent dispute: Wisc. fights back
Posted by Alison McCook [Entry posted at 4th April 2007 07:22 PM GMT]
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Return to Top comment: Issues in the rejection of the '780 patent of Thomson/WARF by Lawrence B. Ebert [Comment posted 2007-04-05 22:25:57] Of the text --The USPTO issued rejections based not only on prior art documents filed with the petition for reexamination, but also based on additional references newly found by the USPTO which brought into question the novelty and non-obviousness of Thomsons original patent claims. To support their petition, the petitioners for reexamination of the patents cited several prior art documents, including papers published between 1982 and 1990 that detail a process for deriving embryonic stem cells from mammals. In addition, Dr. Jeanne Loring of the Burnham Institute, a well respected and world renowned stem cell research scientist, submitted supporting evidence to the USPTO. --, a discussion of the rejection in re-examination of the claims of US 5,843,780 appears at
http://ipbiz.blogspot.com/2007/04/first-office-action-rejects-claims-of.html Of -- on additional references newly found by the USPTO which brought into question the novelty and non-obviousness of Thomsons original patent claims. --, the NEWLY APPLIED reference in the re-exam of the '780 was a paper by Bongso which #1. was cited in the '780 patent [Bongso, et al., "Isolation and culture of inner cell mass cells from human blastocysts", Human Reproduction, 9:2110-2117, 1994. ] #2. was mis-cited in the re-exam [9 Human Reproduction 2110 (1984), not exactly showing great care in proofreading NOW or analysis at the time of the application.] Of --from mammals--, the key text at issue with the Williams patent is --from animals including, but not limited to, humans and a number of other animal species such as birds (e.g. chickens), mice, sheep, pigs, cattle, goats and fish.-- There is going to be a major league enablement issue of Williams as to "humans." Separately, the declaration of Loring played no part in the rejections. Although it is certainly correct to say the issue is the novelty and nonobviousness of the claims of Thomson / WARF, one notes that a manner to establish this will be evaluating the enablement of the cited prior art. Return to Top comment: Patentability of WARF Patent Claims by Lisa Haile and Stacy Taylor, DLA Piper US [Comment posted 2007-04-05 19:22:44] The question isn't whether Dr. Thomson's work was worthy of a patent, but whether the claims WARF obtained defined something that was sufficiently new and non-obvious to qualify for patent protection. In that respect, the WARF patents were issued in 1998, 2001, and 2006 for studies done by James Thomson. The patent claims cover not only methods for obtaining stem cells from fertilized embryos, but also cover the embryonic stem cells themselves.
The USPTO issued rejections based not only on prior art documents filed with the petition for reexamination, but also based on additional references newly found by the USPTO which brought into question the novelty and non-obviousness of Thomson??s original patent claims. To support their petition, the petitioners for reexamination of the patents cited several prior art documents, including papers published between 1982 and 1990 that detail a process for deriving embryonic stem cells from mammals. In addition, Dr. Jeanne Loring of the Burnham Institute, a well respected and world renowned stem cell research scientist, submitted supporting evidence to the USPTO. While WARF now has an opportunity to argue the issue, and an initial rejection of the claims by the USPTO in any patent application is not uncommon, a situation in which the examiners are clearly second-guessing their original decision to issue a patent does not bode well for WARF. Comment on this blog |