Ex parte DeGrado (BPAI 2011)
The University of Pennsylvania's pending patent application No. 10/801,951 is directed to the treatment of microbial infections with an amphiliphilic oligomer. The amended claims define the oligomer with seven functional variables that are each independently selected from separate Markush-style groupings and ranges. (Formula R1-[-x-A1-x-y-A2-y-]m-R2). The result is that millions of different oligomers fit within the claim scope.
The case is now on appeal before the BPAI on grounds of obviousness-type double patenting based on a prior similar patent also coming from Professor Degrado's Lab. Penn has refused to file a term-limiting terminal disclaimer.
In a recent decision, USPTO Commissioner Robert Stoll asserted his role as an Administrative Patent Judge in joining a BPAI decision in the case. The particular decision here does not relate to the obviousness-type double patenting rejection, but rather to “whether Applicants may be required to restrict their claims to a single invention” and whether the claim as drafted is a “proper Markush Claim.” The BPAI has asked for further briefing on those issues.
Limits on Restrictions: The USPTO's authority for restriction practice stems at least in part from 35 U.S.C. 121. That Section authorizes the USPTO Director to require applications “to be restricted to one” invention. However, in the 1978 Webber case, the CCPA limited that power – holding that Section 112 gives applicants authority to present claims structured as they see fit. In that case, the court specifically held that patent applicants had the right to include multiple independent and distinct inventions within a single claim. The BPAI has asked the parties in this dispute to brief this conflict between Webber and the language of Section 121.
Markush Claims: The BPAI has also requested briefing on the question of whether the claims here are proper Markush-type claims.
This case is likely to result in a precedential BPAI opinion and CAFC appeal and may have an important impact on restriction practice and Markush-style claiming.