“In the case of obviousness in view of the state of the art, a key question is generally “what problem was the patentee trying to solve?”
“33. Common general knowledge is quite different. It is what people skilled in the art actually do know, or ought to know, provided that knowledge is regarded as sound. Common general knowledge is not a phrase used in the Patents Act or the European Patent Convention. It would be difficult to define the person skilled in the art in this case, or the common general knowledge, because so far as I know there is no recognised profession or calling of designing folding attic stairways. At the date of the patent nobody seems to have done it in the British Isles except the Claimant and perhaps one other company. There must have been one or more companies in America, I suppose. It is unfair to define an art too narrowly, or else you could imagine absurd cases e.g. “the art of designing two-hole blue Venezuelan razor blades”, to paraphrase the late Mr T.A. Blanco White. Then you could attribute the “common general knowledge” to that small band of persons who made those products and say that their knowledge was “common general knowledge” in “the art”
“I think one can draw from [Dyson v Hoover] that the Court, in considering the skills of the notional “person skilled in the art” for the purposes of obviousness will have regard to the reality of the position at the time. What the combined skills (and mind-sets) of real research teams in the art is what matters when one is constructing the notional research team to whom the invention must be obvious if the Patent is to be found invalid on this ground.”
“This invention provides methods for attaching a nucleic acid to a solid surface and for sequencing nucleic acid by detecting the identity of each nucleotide analogue after the nucleotide analogue is incorporated into a growing strand of DNA in a polymerase reaction. The invention also provides nucleotide analogues which comprise unique labels attached to the nucleotide analogue through a cleavable linker, and a cleavable chemical group to cap the -OH group at the 3' -position of the deoxyribose.”
“Nucleotides bearing this blocking group at the 3' position have been synthesised, shown to be successfully incorporated by DNA polymerases, block efficiently and may be subsequently removed under neutral, aqueous conditions using water soluble phosphines or thiols allowing further extension”
“… The notional skilled person is assumed to have read and understood the contents of the prior art. However that does not mean that all prior art will be considered equally interesting. The notional skilled person is assumed to be interested in the field of technology covered by the patent in suit, but he is not assumed to know or suspect in advance of reading it that any particular piece of prior art has the answer to a problem he faces or is relevant to it. He comes to the prior art without any preconceptions and, in particular, without any expectation that it offers him a solution to any problem he has in mind. Some pieces of prior art will be much more interesting than others. … ”
“The compounds discussed above are useful specifically blocked synthons. For example, alkylthioalkyl groups can be removed with methyl iodide, mercury(II) and silver(I) salts, tritylium tetrafluoroborate, or bromine/water treatment. OMethoxymethyl substituted nucleosides may be deblocked according to Nishino, and acetoxymethyl and 2- cyanoethoxymethyl groups undergo elimination under alkaline conditions. Azidomethyl group is of special interest, since it can be removed under very specific and mild conditions, viz. with triphenylphosphine in aqueous pyridine at 20 ºC.”
“That’s a perfectly valid argument. Yeah, I agree with you. You probably thinking about it; use it, yes.”
“Significant efforts have been dedicated for evaluating a wide variety of 3’ modified nucleotides to be used as terminators for various DNA polymerases and reverse transcriptases, but none of the functional groups tested have had established methods to regenerate a free 3-OH.”
“[…] One [point] relates in essence to the patentee’s failure to limit his claims to the use of azidomethyl in methods in which its reversible nature is of utility, i.e. SBS methods. Instead the patentee has claimed greedily, attempting to throw the claims wider to cover the use of azidomethyl in methods of synthesis and Sanger sequencing. In both cases the claims cover embodiments in which the use of azidomethyl simply represents an alternative chain terminator, whose selection is not justified by any useful technical property. […]”
“clearly discloses (whereas Zavgorodny 1991 and Zavgorodny 2000 do not) the utility of 3'-O-azidomethyl blocked nucleotides as reversible chain terminators in a sequencing by synthesis method. For example, [the document] discloses on page 23 that such modified nucleotides have been shown to be successfully incorporated by a number of different polymerases, block efficiently, and may subsequently be completely removed with 100% yield under neutral, aqueous conditions using water soluble phosphines or thiols, allowing further extension of the oligonucleotide chain.”
“i) The requirement of sufficiency imposed by article 83 of the EPC exists to ensure that the extent of the monopoly conferred by the patent corresponds with the extent of the contribution which it makes to the art. ii) In the case of a product claim, the contribution to the art is the ability of the skilled person to make the product itself, rather than (if different) the invention. iii) Patentees are free to choose how widely to frame the range of products for which they claim protection. But they need to ensure that they make no broader claim than is enabled by their disclosure. iv) The disclosure required of the patentee is such as will, coupled with the common general knowledge existing as at the priority date, be sufficient to enable the skilled person to make substantially all the types or embodiments of products within the scope of the claim. That is what, in the context of a product claim, enablement means. v) A claim which seeks to protect products which cannot be made by the skilled person using the disclosure in the patent will, subject to de minimis or wholly irrelevant exceptions, be bound to exceed the contribution to the art made by the patent, measured as it must be at the priority date. vi) This does not mean that the patentee has to demonstrate in the disclosure that every embodiment within the scope of the claim has been tried, tested and proved to have been enabled to be made. Patentees may rely, if they can, upon a principle of general application if it would appear reasonably likely to enable the whole range of products within the scope of the claim to be made. But they take the risk, if challenged, that the supposed general principle will be proved at trial not in fact to enable a significant, relevant, part of the claimed range to be made, as at the priority date. vii) Nor will a claim which in substance passes the sufficiency test be defeated by dividing the product claim into a range denominated by some wholly irrelevant factor, such as the length of a mouse’s tail. The requirement to show enablement across the whole scope of the claim applies only across a relevant range. Put broadly, the range will be relevant if it is denominated by reference to a variable which significantly affects the value or utility of the product in achieving the purpose for which it is to be made. viii) Enablement across the scope of a product claim is not established merely by showing that all products within the relevant range will, if and when they can be made, deliver the same general benefit intended to be generated by the invention, regardless how valuable and ground-breaking that invention may prove to be.” ii) In the case of a product claim, the contribution to the art is the ability of the skilled person to make the product itself, rather than (if different) the invention. iii) Patentees are free to choose how widely to frame the range of products for which they claim protection. But they need to ensure that they make no broader claim than is enabled by their disclosure. iv) The disclosure required of the patentee is such as will, coupled with the common general knowledge existing as at the priority date, be sufficient to enable the skilled person to make substantially all the types or embodiments of products within the scope of the claim. That is what, in the context of a product claim, enablement means. v) A claim which seeks to protect products which cannot be made by the skilled person using the disclosure in the patent will, subject to de minimis or wholly irrelevant exceptions, be bound to exceed the contribution to the art made by the patent, measured as it must be at the priority date. vi) This does not mean that the patentee has to demonstrate in the disclosure that every embodiment within the scope of the claim has been tried, tested and proved to have been enabled to be made. Patentees may rely, if they can, upon a principle of general application if it would appear reasonably likely to enable the whole range of products within the scope of the claim to be made. But they take the risk, if challenged, that the supposed general principle will be proved at trial not in fact to enable a significant, relevant, part of the claimed range to be made, as at the priority date. vii) Nor will a claim which in substance passes the sufficiency test be defeated by dividing the product claim into a range denominated by some wholly irrelevant factor, such as the length of a mouse’s tail. The requirement to show enablement across the whole scope of the claim applies only across a relevant range. Put broadly, the range will be relevant if it is denominated by reference to a variable which significantly affects the value or utility of the product in achieving the purpose for which it is to be made. viii) Enablement across the scope of a product claim is not established merely by showing that all products within the relevant range will, if and when they can be made, deliver the same general benefit intended to be generated by the invention, regardless how valuable and ground-breaking that invention may prove to be.”
“the term ‘incorporation’ of a nucleotide into a nucleic acid strand or polynucleotide refers to the joining of the nucleotide to the free 3’ hydroxyl group of the nucleic acid strand via formation of a phosphodiester linkage with the 5’ phosphate group of the nucleotide.”
“24. […] I quite agree that there is no law of collocation in the sense of a qualification of, or gloss upon, or exception to, the test for obviousness stated in s.3 of the Act. But before you can apply s.3 and ask whether the invention involves an inventive step, you first have to decide what the invention is. In particular, you have to decide whether you are dealing with one invention or two or more inventions. Two inventions do not become one invention because they are included in the same hardware. A compact motor car may contain many inventions, each operating independently of each other but all designed to contribute to the overall goal of having a compact car. That does not make the car a single invention.”
“26. The EPO guidelines say that “the invention claimed must normally be considered as a whole”