Claims Found To Be "Essentially Free" Of Patentability

• Published date: 09 December 2020
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Kyu Yun Kim, Adriana L. Burgy and Stacy Lewis

Holding

In re Devlin, No. 2020-1351, 2020 WL 6437962 (Fed. Cir. Nov. 3, 2020), nonprecedential, the Federal Circuit (Judges Moore, O'Malley, and Taranto) affirmed the Board's decision affirming an Office's rejection of claims 1-4 of U.S. Pat. Appl. No. 15/078,167.

Background

The '167 application claims a method of treating psoriasis by administering a vitamin supplement composition that is "essentially free of anti-oxidants." The Office rejected claims 1-4 of the '167 application as obvious over Serfontein (EP 0 595 005). In particular, the Office cited Serfontein's claim 1 for disclosing elements claimed in the '167 application.

Claim 1 of the '167 application and Serfontein each recites:

claim 1 of the '167 application

claim 1 of Serfontein

A method of treating psoriasis by administering to a person a vitamin supplement composition comprising at least about 25 micrograms to about 2,200 micrograms of folic acid, at least about 25 micrograms to about 2,500 micrograms of vitamin B12, and at least about 0.5 milligrams to about 20 milligrams of vitamin B6, wherein said composition is essentially free of anti-oxidants.

The use in the manufacture of a pharmaceutical preparation for lowering levels of homocysteine or for the prophylaxis or treatment of elevated levels of homocysteine or of clinical conditions associated therewith in a patient of a combination comprising a) vitamin B6; b) folate or a suitable active metabolite of folate or a substance which releases folate in vivo; c) vitamin B12, with or without intrinsic factor.

See claim of the '167 application (emphasis added); claim 1 of Serfontein (emphasis added). This brings to mind Judge Rich's classic opinion in In re Benno, 768 F.2d 1340 (Fed. Cir. 1985), in which the Federal Circuit emphasized that a patent claim is no measure of what a patent actually discloses:

The scope of a Patent's claims determines what infringes the patent; it is no measure of what it discloses. A patent discloses only that which it describes, whether specifically or in general terms, so as to convey intelligence to one capable of understanding. While it is true, as the Solicitor suggested at oral argument, that "a claim is part of the disclosure," that point is of significance principally in the situation where a patent application as filed contains a claim which specifically discloses something not disclosed in the descriptive part of the specification (claims being technically part of the "specification," . . .

...