Case of Kaihui Technology Development (Shanghai) Co., Ltd. Requests for Reexamination Authorized (Patent attorneys: Qi Xue and Li Shen)
2013-04-18 14:59:31 Source： Hit：
Case information
Application Number: 200510028963.X
Title: An anti-arthritis drug cells target screening system and drug-screening method
Applicant: Kaihui Technology Development (Shanghai) Co., Ltd.
Agent: Patent lawyer Xue Qi and Shen Li of the office as the agent for Kaihui Technology Development (Shanghai) Co., Ltd. during the reexamination procedure
Cause of action
In 2010, the First Office Action was sent by the Patent Office, citing the reference document 1(WO2005024059A). The examiner found that the technical solution of this application is not sufficiently disclosed, which is not in conformity with the provision of paragraph 3, Article 26 of the Patent Law.
In 2011, the applicant submitted the reply to the First Office Action, citing attachment 1 (technical manuals of pGL3 Luciferase report carrier), attachment 2 (US7468369, Priority date 2005-1-4, the publication date of whose patent family WO2006072393A2 is 2006.7.13), and attachment 3 (J.-P. Cadoret etc. Transient expression assays with the proximal promoter of a newly characterized actin gene from the oyster Crassostrea gigas，FEBS Letters 460 (1999) 81~85).
On November 26, 2010, the application was rejected for the following reasons: the application requests to protect an anti-arthritis drug cells target screening system, while the construction method of which includes cloning mPGES-1 promoter, COX-1 promoter and COX-2 promoter gene to pGL3BN carrier. However, the description does not record the concrete structure of pGL3BN carrier. The means is not clearly defined such that the technical solution cannot be carried out by a skilled person, which is not in conformity with the provision of paragraph 3, Article 26 of the Patent Law.
The applicant requested for reexamination on March 11, 2011, without submitting amendments to the application.
Main reasons and evidence in the request for reexamination:
Analyzing the case, the applicant found that, in the decision of rejection, the examiner insisted that the contents recorded in figure 1 are not belong to the contents of the description, thus the description does not record the concrete structure of pGL3BN carrier. Additionally, the examiner misunderstood the observation of the First Office Action, considering that the applicant trying to explain ‘pGL3BN carrier’ as a disclosed commercial carrier, which is a disguised replacement of logic concept. In the observation of the First Office Action, the applicant explained that ‘pGL3B carrier’ was commercial plasmid disclosed before the application date first, and then explained that ‘pGL3BN carrier’ could be obtained on the basis of ‘pGL3B carrier’ by a skilled person through routine technology. The applicant did not explain ‘pGL3BN carrier’ as a commercial carrier product disclosed before the application date. Thus, in request for reexamination, the agent pointed out the above problems in the decision of rejection. The agent also cited attachment 1,2, conventional way of reading the plasmid map, and conventional nomenclature of plasmid, to form a complete chain of evidence to show that the concrete structure of pGL3BN carrier has been disclosed. In accordance with the contents of description, the person skilled in the art could carry out the technical solution of the invention. Therefore, the technical solution of the application is disclosed sufficiently by the description of the invention, which is in conformity with the provision of paragraph 3, Article 26 of the Patent Law.
Attachment 1: An Mx1 promoter–reporter system to study interferon pathways in rainbow trout; Bertrand Collet a, Pierre Boudinot b, Abdenour Benmansour b and Christopher J. Secombes; Developmental & Comparative Immunology, Volume 28, Issues 7-8, June 2004, Pages 793-801
Attachment 2: Technical Manual: pGL3 Luciferase Reporter Vectors
Other information
In the observation of the First Office Action, the applicant cited original attachment 1(technical manuals of pGL3 Luciferase report carrier), original attachment 2(US7468369, Priority date 2005-1-4, the publication date of whose patent family WO2006072393A2 is 2006.7.13), and original attachment 3 (J.-P. Cadoret etc.Transient expression assays with the proximal promoter of a newly characterized actin gene from the oyster Crassostrea gigas，FEBS Letters 460 (1999) 81~85) as evidence. However, the examiner found that the publication date of attachment 1(technical manuals of carrier) was after the application date, so it was not accepted. Thus, the examiner still insisted that the description does not record the concrete structure of pGL3BN carrier, which is not in conformity with the provision of paragraph 3, Article 26 of the Patent Law, thus the application was rejected. The agents analyzed the case carefully and cannot find the edition of attachment 1 (technical manuals of carrier) published before the application date but the edition after the application date. Thus, the agents were stuck in trouble. The agents continued to seek for other evidence. After experiencing setbacks, the agents finally found other ways to prove the technical solution of the application disclosed sufficiently and obtained the corresponding evidence, and thereby submitted the request for reexamination using the above reasons and evidence.
Kaihui Technology Development (Shanghai) Co., Ltd., also known as Kaihui Medical Technology (Shanghai) Co., Ltd., is a subsidiary wholly-owned by Shanghua Pharmaceutical Service Group (hereinafter referred to as “Shanghua Group”) which was listed in NYSE in U.S. in 2010.
The application of this patent was not handled by lawyer of our office, and the observation of the Office Action and the requests for reexamination were handled by lawyer of our office. The patent lawyer Xue Qi and Shen Li of our office are the agents for this case.
Result:
After the requests for reexamination, the Patent Reexamination Board did not issue Notification of Reexamination or take oral proceedings, and directly made the reexamination decisions and revoked the decision of rejection. The examiner continued the examination of this application.
On January 4, 2012, the examiner pointed out in the Second Office Action that the application has defect that the claims are not clarity, which is not in conformity with the provision of paragraph 4, Article 26 of the Patent Law. The applicant submitted the observation and amendments to overcome said defect.
On May 14, 2012, the examiner issued Notification to Grant Patent Right and the application was granted a patent right.
